Legal framework Rights holders in Poland can protect their rights through both civil and criminal proceedings. Moreover, in order to extend the scope of protection against other potential threats, rights holders can rely on customs procedures. Poland is a signatory to several international treaties relating to trademarks and anti-counterfeiting that have the same legal effect as regulations directly enacted by the Polish Parliament. These treaties include: • the Paris Convention for the Protection of Industrial Property; • the Madrid Agreement and Protocol relating to the Madrid Agreement concerning the International Registration of Trademarks; and • the Agreement on Trade-related Aspects of Intellectual Property Rights. Since May 1 2004, when it acceded to the European Union, Poland has been bound by EU legislation, including the EU Community Trademark Regulation (207/2009). The main national legislation on trademark protection is the Industrial Property Law of June 30 2000, which came into effect on August 22 2001, with further amendments. Other Polish and EU legislation regarding anti-counterfeiting or piracy include the following: • the Code of Criminal Proceedings; • the Penal Code; • the Civil Code; • the Code of Civil Proceedings; • the Act on Combating Unfair Competition Practices; • the Copyright Law; • the Pharmaceutical Law; • the EU Customs Regulation (1383/2003); and • the Ministry of Finance Regulation on the Destruction of Goods under Article 11 of the Customs Regulation. Border measures The EU Customs Regulation provides that rights holders may file a request for customs protection with the main Customs Chamber in Warsaw; such protection prohibits the import or export of counterfeit goods. Once such protection is granted, it remains valid for one year and is renewable. The protection consists of allowing Customs to seize and hold any suspected counterfeit goods for 10 working days (which can be extended by 10 further days, if justified). Rights holders can then contact the customs office where the goods are being held and request more detailed information about the entity or person who signed the customs declaration, as well as data concerning the recipient of the goods, the amount seized or samples of the suspect goods. In case of seizure, a rights holder must provide the customs authorities with evidence that it has filed a motion for prosecution, a request to secure the claim or a statement of claims. In practice, this means that rights holders should file the motion for prosecution (with the police, the Public Prosecutor’s Office or the appointed customs offices) or the request to secure the claim or the statement of claims with a civil court within 20 working days of the customs seizure (this includes the initial statutory 10 days and a 10-day extension, which may be justified on the basis that the motion for prosecution, the request to secure a claim or the statement of claim is being prepared for filing). The 10-day period starts from the date on which the rights holder is notified in writing of the seizure. Another option is for rights holders to obtain consent from the importer for the seized goods to be destroyed and then provide Customs with a copy of this consent (a so-called ‘simplified procedure’, as provided under the Ministry of Finance Regulation on the Destruction of Goods). Otherwise, the goods will be released. Under the Custom Regulation, Polish Customs can seize goods ex officio, even if customs protection has not yet been applied for or granted. Customs may hold goods for up to three working days to enable the rights holder to file the abovementioned request for customs protection. Otherwise, the goods must be released. New regulation A new EU regulation (608/2013) of June 12 2013 concerning customs enforcement of IP rights repeals the Customs Regulation. This new regulation applies throughout the European Union (including Poland) from January 1 2014. The new regulation is based on similar rules as those stated in the Customs Regulation; however, it also provides rights holders with new tools against infringements. The first ‘new’ tool is the obligatory use of the so-called ‘simplified procedure’ by the customs authorities, which means that when certain conditions stated in the regulation are met, the seized goods can be destroyed under customs control “without there being any need to determine whether an IP right has been infringed under the law of the member state where the goods are found”. Thus, the simplified procedure is no longer optional – it is now compulsory. The second new instrument is a special procedure for the destruction of goods in small consignments. The justification for this procedure is the growing number of counterfeit/infringing goods sent in small consignments via postal or courier services. Criminal prosecution Trademark protection under penal law is guaranteed by the following acts: • the Industry Property Law; • the Code of Criminal Proceedings; and • the Penal Code. The Industrial Property Law provides a legal definition of a ‘trademark’ and a ‘counterfeit trademark’, and sets out criminal provisions with regard to counterfeiting. According to the Industrial Property Law, a ‘counterfeit trademark’ is any mark that is: • identical to or indistinguishable in the course of trade from a registered trademark; and • unlawfully used in respect of goods covered by the registration. A party that affixes a counterfeit trademark to goods with the intention of introducing them onto the market or that commits acts resulting in the production of such goods may be subject to: • a fine; • restriction of liberty; or • imprisonment for up to two years. The owner of an infringed trademark is entitled to commence a criminal action. Only after filing a motion for prosecution can an investigation be started and further continued ex officio. The exception is when permanent profits are obtained from criminal activity involving a registered trademark, or when criminal acts result in the manufacturing of counterfeit goods bearing a valuable trademark. In such cases the infringer is subject to more serious criminal penalties and an investigation may be started by the police or public prosecutor ex officio. However, anyone committing such criminal acts will be punished only if it can be proved that the action was intentional. In general, trademark protection is broader under civil than criminal law. The criminal provisions of the Industrial Property Law do not apply in situations where infringement has taken place in respect of an unregistered trademark, including unregistered famous and well-known trademarks. The investigation of criminal infringements is conducted by the following authorities: • the public prosecutor; • the police; and • Customs. Pursuant to the Code of Criminal Proceedings, the owner of an infringed mark is considered the injured party during investigation and trial. Consequently, the rights holder may act before the court as an auxiliary prosecutor together with the public prosecutor. Evidence obtained in criminal proceedings may be admitted for use in civil proceedings and vice versa. However, the Civil Court is obliged to recognise the established facts that were the grounds for any verdict issued by the Criminal Court. Civil enforcement The implementation of the EU IP Enforcement Directive (2004/48/EC) into the Polish Industrial Property Law came into effect on June 20 2007. The amendments revised the provisions on the civil enforcement of trademarks and anti-counterfeiting efforts. Under the amended law, the following remedies are now available to rights holders: • cessation of the infringement; • surrender of unlawfully obtained profits; • compensatory damages, in accordance with the relevant principles of the Civil Code, or payment of a lump-sum equivalent to a licence fee or any other remuneration that would have been due had the infringer been authorised to use the trademark; • publication of the court verdict – either in whole or in part – or publication of information about the verdict; • disposal, at the rights holder’s request, of the unlawfully manufactured or marked products, as well as the means used to manufacture them (ie, by removing them from the market or destroying them); and • payment (in case of unintentional infringement) of the relevant sum to the benefit of the rights holder if the cessation of infringement or forfeiture of the goods would be disproportionate and the abovementioned sum would fulfil the rights holder’s interest. As to pre-trial discovery and obtaining evidence, the court will oblige defendants or third parties to provide it with relevant evidence (ie, documents confirming the scope of sale of counterfeit products). Since June 20 2007 rights holders have been able to request the court, in separate proceedings, to order defendants or third parties to deliver information regarding the following: • the origin of and distribution networks for counterfeit goods; • the names and addresses of manufacturers and suppliers; and • the amount of the goods that were manufactured and then sold. In civil proceedings, a rights holder may seek a preliminary injunction. Requests for injunctions must be filed with the court, together with evidence of: • the rights holder’s legal interest in requesting the injunction – this is deemed to exist where a failure to impose an injunction would seriously impede enforcement of the court’s decision; • the rights holder’s ownership of the infringed trademark; and • the fact that the infringement was committed in respect of goods under the relevant trademark. A request for a preliminary injunction may be brought before filing the statement of claim or during the trial once it has started. If the request is filed before the trial commences, the court, upon issuing a decision to grant a preliminary injunction, will set a deadline for filing the statement of claim. If the plaintiff misses this deadline, which cannot exceed two weeks, the entire claim is liable to cancellation. The decision on a preliminary injunction may also be treated as grounds for seizures and raids conducted by court bailiffs. Under current regulations, a request for a preliminary injunction should be examined immediately. However, in practice, court decisions on preliminary injunctions usually take between 10 and 14 days. Trademark infringement cases are handled by common civil courts; there are no separate specialist IP courts. If a case concerns a dispute between two companies on the grounds of their business activity, such case will be examined by a civil court in commercial proceedings. In trademark infringement proceedings, the plaintiff submits all the relevant evidentiary materials to prove that the infringement has taken place. As a rule, the court considers no evidence ex officio. The main kinds of evidence are witnesses, documents and the opinions of court-appointed or private experts. The burden of proof rests with the plaintiff. As a general rule, the parties may indicate facts, evidence to prove the claims or to defend the claims, requests or statements of the opposite party until the end of a trial. However, the court may disregard late statements or evidence, unless the party can prove that such delay occurred through no fault of its own or that taking the late statements or evidence into consideration will not delay the examination of the case; the parties may also refer to other exceptional circumstances. The court will also disregard statements and evidence if they are filed for the sole purpose of delaying the examination of the case or if disputable circumstances of the case have already been sufficiently clarified. The court may oblige the plaintiff and the defendant to file further pre-trial pleadings; the court will determine the time and order for filing such pleadings, as well as the circumstances and facts that should be clarified.
In such a case the court may also disregard late statements or evidence, unless the party proves that it failed to mention them in the statement of claims or statement of defence or further pre-trial pleadings due to no fault of its own, or that taking the late statements and evidence into consideration will not delay the examination of the case; the parties may also refer to other exceptional circumstances. It is thus advisable for the plaintiff to mention in the statement of claim all statements relevant to the case and to attach all evidence to support those statements. Disputes involving Community trademarks are handled by the Community Trademark Court in Warsaw. The court examines cases on the basis of the provisions set out under the Community Trademark Regulation and the relevant provisions of Polish law (ie, the Code of Civil Proceedings). Anti-counterfeiting online There are no separate provisions dealing with IP rights infringement online. Unauthorised internet commerce falls within the scope of legal regulations referring to typical activities in this field. IP rights holders can use the same measures and tools to combat infringement of their exclusive rights online as in ordinary cases. The grounds on which such actions would be taken depend on the factual and legal circumstances in which the matter appear and would result in starting civil or criminal proceedings. Using one or both types of proceeding is usually optional for entitled parties. Nevertheless, in either case the plaintiff must collect evidence of online IP infringement before the proceedings start. Legal grounds for such actions can be found in the Industrial Property Act and the Unfair Competition Act, and such actions are regulated by the Civil Proceedings Act and the Criminal Proceedings Act. These statutes require that the rights holder actively collate evidence relating to the infringements themselves, as well as to the infringer. Monitoring the use of a trademark online, especially on auction websites, is of great value. The leading Polish auction services offer programmes that are aimed at monitoring and eliminating trading in counterfeit or pirated goods. Usually, the monitoring requires – apart from closing down a website or an auction – also purchasing the counterfeit or pirated product in order to collect the evidence needed to initiate civil or criminal proceedings. Under the Law on Electronic Services, the liability of internet service providers (ISPs) is limited. If the ISP knows nothing about the unlawful nature of the collected data and if, after being informed officially or in any other reliable way of the unlawful nature of such data, it immediately stops the access to the data, its liability is excluded. Moreover, the Law on Electronic Services forbids putting any additional obligation to monitor any transmitted or stored data. Accordingly, the ISP cannot be held liable for the fact that IP rights are infringed on the Internet. However, under Polish criminal and civil law, in specific circumstances, the ISP may be held liable as an assistant to the infringer. Preventive measures/ strategies Statutory legal provisions offer a wide range of measures and tools allowing for effective protection of IP rights in Poland. Most of these tools are of a repressive nature. While it is important to keep them in mind, it is crucial also to devise strategies using preventing measures. Customs protection is an obvious tool helping IP holders to prevent infringement. Under the relevant regulations, rights holders may provide custom officers who have undergone IP-related training with information that enables them to distinguish genuine goods from counterfeit products. Another effective preventing measure is to control the manufacturing and distribution of the products protected by IP rights. It is crucial to act quickly when suspicious situations arise. Appropriate control tools include licensing and distribution agreements, which offer the other advantage of increasing the value of the IP rights if handled well. If such agreements are supported by monitoring services conducting by a local investigator, then the rights holder will be able to react quickly in case of infringement. Another preventive measure consists of applying the trademark to the relevant products and consequently informing the market participants that these products are protected by exclusive rights.
Rights holders should also monitor all information and communication referring to their product aimed at the public. Where and when the tools and measures listed above should be used will vary. Close cooperation with local counsel is strongly recommended as they will have the knowledge, experience and relationships with the relevant bodies and authorities to ensure effective protection.