The EU Trademark Directive 2015/2436 has not been implemented into Polish law yet. The lower house of the Polish Parliament adopted bill amending the Polish Industrial Property Law on January 17, 2019. The bill is going to be voted by the upper house and then will be forwarded to President. Once the legislative procedure is finished, the EU Trademark Directive 2015/2436 will be transposed into Polish law.
One of the interesting amendments is planned regulation on joint liability for trademark infringements. So far, Polish law has not contained any special provisions governing the indirect infringements of intellectual property right (further: IPR). In case of indirect infringement of IPRs the general provisions on liability for torts shall apply. The base regulation on the trot stays that a person who has inflicted damage to another person by his own fault shall be obliged to redress it (art. 415 of the Polish Civil Code (‘CC’). Not only a person who has directly inflicted damage but also the person who has induced another person to inflict the damage or who has assisted him, as well as the person who consciously benefited from the damage inflicted to another person shall be liable for the damage (art. 422 CC). The abovementioned regulations and consequently the case-law, in large extent relate to regular civil claims (not IPRs), yet they do find appropriate application for IPRs cases, what is confirmed by jurisprudence (vide: decision of Supreme Court: 24.06.2014, I CSK 540/13, 11.08.2011, I CSK 633/10, 30.04.1974, II CR 161/74).
Nowadays, the reference to the general CC provision in case of indirect infringement of IPRs deprive the entity whose IPRs have been infringed indirectly the opportunity to use all remedies available against direct infringement. In case of indirect infringement just damage claim is available. It is not possible to claim discontinuance of the infringement or removal the effects of the infringement. Such situation is contrary to Enforcement Directive 2004/48/EC and UE case law (vide: ECJ dated C-494/15 Tommy Hilfiger and others vs. Delta Centre).
The new wording of the planned art. 296 item 3 of Polish Industrial Property Law that refer to trademark infringement, clearly stays that all remedies available against direct infringement may be used against the indirect infringer. This change will allow to fight with indirect infringers more efficiently.