Counterfeit goods present significant and growing challenges for rights holders in the global economy. However, rights holders are not defenceless. They can take a variety of actions to combat counterfeiting, such as recording their IP rights with national customs authorities, supporting law enforcement authorities in the seizure and destruction of counterfeit goods and commencing proceedings before civil and criminal courts. Most importantly, rights holders should not wait until they have a counterfeiting problem before they start thinking about protecting their IP rights.
Poland is a member of the European Union, as well as part of the Community trademark and design systems. Therefore, both national and EU laws apply in Poland. The anti-counterfeiting legal framework comprises the following laws and regulations:
- the EU Customs Regulation (608/2013);
- the EU Customs Implementation Regulation (1352/2013);
- the EU Community Trademark Regulation (207/2009);
- the EU Community Designs Regulation (6/2002);
- the Industrial Property Law 2000;
- the Act on Combating Unfair Competition 1993;
- the Copyright and Neighbouring Rights Law 1994;
- the Act on Rendering Electronic Services 2002;
- the Civil Code and the Code of Civil Proceedings;
- the Penal Code and the Code of Criminal Proceedings;
- the Tax Ordinance 1997; and
- the Regulation of the Minister of Finance on the Destruction and Forfeiture of Goods 2004.
Any rights holder that is concerned about imports or exports of infringing goods should record its IP rights with Customs by submitting an application for action. This is one of the most effective and affordable ways to combat counterfeit goods at the border.
In 2014 the new EU Customs Regulation came into force, establishing the conditions and procedures for customs authorities where goods suspected of infringing IP rights are subject to customs control within the EU customs territory.
Customs may suspend or detain suspected infringing goods at the border; these actions are undertaken by Customs at the request of an interested party or ex officio. Actions undertaken at the request of an interested party are based on an application for action filed with the Customs Chamber in Warsaw. The application for action must be made out on a new form constituting an attachment to the EU Customs Implementation Regulation. There are no official application fees.
The new EU Customs Regulation requires an application for action to contain more specific data on the authentic goods than previously specified. Rights holders must provide Customs with specific information as requested in the form; otherwise, the application will be rejected. Additional information concerning the infringing goods may also be attached, such as photographs, technical specifications, distinctive features, the place of production and any other information that may help Customs to identify the counterfeits.
In addition, the new regulation has introduced a small consignment procedure. A ‘small consignment’ is a postal or express courier consignment that contains three units or fewer or has a gross weight of less than 2 kilograms. The procedure allows for the destruction of such goods without the need for the rights holder to provide separate consent for each consignment. However, the rights holder must cover the costs of destruction.
A rights holder may also file an application for action that covers Poland and other or all EU member states (ie, a union application). However, this may be submitted only with respect to IP rights based on EU law that are effective throughout the European Union – for example, Community trademarks or designs. The applicant must provide details of the designated representatives for legal and technical matters in each country where it seeks customs protection.
An application for action affords protection for one year. However, it can be extended for an additional year by filing a request for extension of protection no less than 30 working days before the expiry of the protection term. There are no official fees for extension. The request must be made out on a form constituting an attachment to the EU Customs Implementation Regulation.
If, during the term of protection, Customs contests the originality of some goods, either their release into circulation will be suspended or they will be detained. Accordingly, Customs will notify the rights holder (or its representative). In general, photographs of the seized goods are attached to the notification. The rights holder may request:
- samples of the goods;
- the names and addresses of the consignee, consignor, declarant or holder of the goods;
- details relating to the origin, provenance and destination of the goods; and
- information on the customs procedure undertaken.
The new EU Customs Regulation provides for the adoption of a simplified procedure as standard. This means that goods detained at the border may be destroyed without the need to establish that exclusive rights have been infringed before a court. Following this procedure, the rights holder has 10 working days from notification of detention to submit documents that are required for destruction of the seized goods under Customs’ supervision, without the need for further legal review. The deadline may be extended by up to 10 working days on a duly justified request filed by the rights holder.
Within the deadline, the rights holder must submit to Customs:
- written confirmation that the seized goods infringe its IP rights;
- written confirmation agreeing to the destruction of the seized goods;
- written confirmation from the holder of the seized goods agreeing to their destruction; and
- an application for destruction of the seized goods that complies with the Regulation of the Minister of Finance on the Destruction and Forfeiture of Goods.
In principle, the costs of destruction are borne by the rights holder. However, this issue may be agreed otherwise in a settlement between the parties. The Regulation of the Minister of Finance on the Destruction and Forfeiture of Goods establishes detailed requirements and procedures for the destruction of goods.
Destruction proceedings are not available if the consignee has not confirmed its consent to the destruction in writing in a timely manner. In that event, the rights holder may initiate civil or criminal court proceedings by filing a motion for an interim injunction, a statement of claim or a motion for prosecution. However, if the rights holder fails to take any of these courses of action, Customs will release the goods.
Ex officio actions are taken by Customs where, before any application for action is filed, it suspects that controlled goods infringe exclusive rights. In this situation, Customs may suspend the release of the goods or detain them; the rights holder then has four working days from the date of notification to file a national application for action. If no application is filed, Customs will release the detained goods.
Criminal proceedings may be instituted for the offence of marking goods with a counterfeit trademark for the purpose of placing them on the market or putting counterfeit goods on the market. After the rights holder has filed a motion for prosecution, criminal proceedings are conducted ex officio and the rights holder may act as a subsidiary prosecutor. Criminal trademark infringements are investigated by the police, public prosecutors and Customs.
The Industrial Property Law establishes fundamental provisions regarding the criminal offence of trademark counterfeiting. It also provides a legal definition of a ‘counterfeit trademark’: an illegally used trademark that is identical or (in the course of trade) indistinguishable from a registered trademark which is used for the same goods as the registered trademark. Unregistered rights (eg, well-known trademarks) are not protected under the criminal provisions of the Industrial Property Law. However, the Act on Combating Unfair Competition and the Copyright and Neighbouring Rights Law also establish prohibited acts connected with the broadly understood offence of trademark counterfeiting.
Under Article 305 of the Industrial Property Law, any party that marks goods with a counterfeit trademark for the purpose of placing them on the market or puts counterfeit goods on the market is liable to a fine, limitation of freedom or imprisonment for up to two years. For less serious offences, the offending party will be liable to a fine.
A party which acquires a continuous source of income from counterfeiting is liable to imprisonment for between six months and five years. The same is true for one-off acts in respect of goods of substantial value. These offences are prosecuted ex officio.
If an offender is convicted of an offence under Article 305, the court may order the forfeiture of any materials, tools and technical devices that were used or intended to be used for the offence, even if they do not belong to the offender.
IP infringement proceedings are conducted before civil courts that are also authorised to order interim measures. Poland has no separate IP divisions, except Division XXII of the Court for Community Trademarks and Designs in Warsaw, which handles cases regarding Community trademarks and designs.
The Industrial Property Law and the Code of Civil Proceedings provide for preliminary measures, including:
- securing claims through an interim injunction;
- securing claims by obliging the infringing party or a third party to provide information; and
- securing evidence.
Under the Code of Civil Proceedings, a claimant seeking an interim injunction should state its claim and legal interest. Therefore, the claimant must declare that:
- it is the holder of IP rights that are valid in Poland;
- these rights have been infringed; and
- failure to grant an interim injunction would prevent or seriously impede enforcement of the judgment or otherwise prevent or hinder achievement of the objective of the proceedings.
An interim injunction may be granted without notice to the other party and before commencement of proceedings. However, if a court grants an interim injunction before proceedings commence, the claimant must file a statement of claim within two weeks. If no claim is filed within that period, the interim injunction will be dismissed. The decision to grant an interim injunction may be treated as grounds to seize counterfeit goods.
Securing of evidence is regulated in the Industrial Property Law and the Code of Civil Proceedings. The procedure enables certain actions to be taken against allegedly infringing items and facilitates the preservation of materials for future proceedings (eg, to determine the extent of an infringement). When the court permits the securing of evidence before proceedings have been instituted, it will also schedule a deadline of no more than two weeks later for filing a statement of claim. Otherwise, the interim injunction expires.
The Industrial Property Law also provides for a request for information from the infringer or a relevant third party. The party requesting the interim injunction must prove that:
- the requested information is indispensable in order for it to pursue its claims; and
- an infringement of its rights is probable.
The claimant may request, among other things:
- information concerning the origin and distribution networks of infringing goods;
- the names and addresses of producers, manufacturers, distributors and suppliers; and
- information on the quantities and prices of the infringing goods.
The next step is to file a statement of claim. Under the Industrial Property Law, the rights holder may demand that the infringer cease the infringement and surrender its unlawfully obtained profits. In case of infringement caused by fault, the rights holder may claim damages:
- in accordance with the general principles of law (as specified in the Civil Code); or
- by the payment of a sum of money corresponding to the licence fee or other reasonable compensation which would have been due had the trademark in question been used lawfully.
When issuing a judgment of infringement, at the rights holder’s request the court may order the disposal of unlawfully manufactured or marked products and the means used in their manufacture or marking, to the extent that they are owned by the infringer. In particular, the court may decide that the goods should be:
- removed from the market;
- given to the rights holder on account of the sum of money to be adjudged to it; or
The court will take into account the gravity of the infringement and third-party interests.
In the case of products bearing a counterfeit trademark, the court may in exceptional cases deem removal of the trademark sufficient to put the products into circulation. If the infringement was committed unintentionally, at the infringer’s request, the court may order the infringer to pay the rights holder an adequate sum of money if cessation of the infringing activity or forfeiture of the goods would be excessively severe and the payment duly accounts for the rights holder’s interests.
When ruling on trademark infringement, at the rights holder’s request, the court may decide to make its judgment – or part thereof – available to the public.
In civil proceedings for IP infringement, rights holders often base their claims on the Act on Combating Unfair Competition, which contains some differences regarding legal remedies.
In addition, EU Regulation 2015/2424 amending the EU Community Trademark Regulation (207/2009) entered into force on March 23 2016. The new regulation is a part of the EU trademark reform legislative package and introduces changes affecting Community trademarks (not least, renaming them ‘EU trademarks’). It also establishes provisions which may help in the fight against counterfeiting regarding the right to prohibit preparatory acts involving the use of packaging and related items (eg, labels, tags, security or authenticity features or devices) and goods in transit.
Polish law does not contain separate provisions regarding unauthorised e-commerce practices. In order to combat unauthorised online trade, rights holders may initiate civil and criminal proceedings or request interim measures. Before starting any court proceedings, sending a cease-and-desist letter can be a cost-effective means of enforcing trademark rights against an infringer.
Since counterfeit goods are often offered for sale on the Internet, rights holders and their representatives often monitor popular auction or group purchase sites. They may also join protection programmes. For example, the largest Polish online auction site has created a special programme intended to guarantee that auctions are legal by protecting IP rights. Under this programme, partners may inform the website of auctions that infringe IP rights. Based on the information that the auction operator receives, the site can intervene quickly and effectively by removing sales offers or even blocking the seller’s account.
Under the Act on Rendering Electronic Services, the liability of internet service providers (ISPs) for data that is transferred, stored or made available is excluded under certain conditions, depending on the types of service rendered by the ISP (ie, mere conduit, caching or hosting). Further, the act provides that an entity providing transmission, storage or data availability services is not obliged to monitor data that is transmitted, stored or made available for IP infringement. In practice, the most important factor is the exclusion of liability for hosting. The service provider is not liable for data stored if:
- it had no knowledge of the illegal nature of the data (or activity connected thereto); and
- on receiving official notification or reliable information on the illegal nature of the data (or activity connected thereto), it immediately disables access to it.
Accordingly, placing a special form on websites through which rights holders may report infringements of their IP rights is becoming increasingly common.
First of all, it is important to register IP rights. In addition, rights holders concerned about imports or exports of counterfeit goods should record their IP rights with the Customs Chamber in Warsaw.
Customs is open and willing to cooperate with rights holders and their representatives. It also actively searches for counterfeit items. Therefore, trademark owners should organise training sessions or prepare materials for customs officers and the police in order to teach them how to recognise counterfeit products. Sometimes employees of a company participate as experts in examinations of detained goods, inspections and raids (eg, at markets).
Another preventative measure is to set up a corporate IP protection programme. Rights holders should also audit their business partners (eg, manufacturers, wholesalers and commercial partners) to check that their storehouses contain only original products. In addition, investigators may be hired to collect evidence of the manufacture, export or import of counterfeit items on a wider scale.
Further, marking products with a certificate of authenticity, hologram, watermark, microprint sticker or safety label is useful for combating counterfeiting.
Rights holders can also initiate public campaigns to raise awareness of counterfeiting among consumers and discourage them from buying such products.
Tomasz Grucelski & Patrycja Cielenkiewicz
This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.