This year, amendments to the Code of Civil Procedure were adopted regarding intellectual property matters. Particular mention should be made of Article 730(1) § 1(1) of the Code of Civil Procedure, according to which "in matters specified in Article 479(89), when assessing whether a claim has been substantiated, the court shall take into account the likelihood of invalidation of the exclusive right in other pending proceedings. This circumstance shall be determined based on information provided by the parties, unless it is known to the court ex officio." This provision is also linked to Article 736 § 5 of the Code of Civil Procedure, according to which "in matters specified in Article 479(89), the application shall also include information on whether any proceedings for invalidation of the exclusive right are or have been pending, or a statement by a party or participant in the proceedings stating that they are not aware of such proceedings.".
Imposing on the entitled party the obligation to disclose whether proceedings for invalidation of an exclusive right are or have been pending will enable the court granting security to determine whether the claim has been substantiated (Civil Procedure Code. Commentary by Prof. Dr. hab. Elwira Marszałkowska-Krześ, Dr. hab. Izabella Gil ). Invalidation of an exclusive right is only possible in the case of industrial property rights, i.e., trademarks, industrial designs, and patents. This possibility does not exist in the case of copyrights, and therefore, in such cases, there is no need to provide information regarding ongoing invalidation proceedings. In addition to court proceedings, pending invalidation proceedings should also certainly include proceedings before the Polish Patent Office and cases before the EU Intellectual Property Office.
The changes also affected Article 755 of the Code of Civil Procedure, which added new sections § 2(2) and § 2(3). According to the first of these, "in matters specified in Article 479(89), the court shall grant security after hearing the obligated party, unless an immediate decision on the motion is necessary. This does not apply to security measures that are fully enforceable by a bailiff or involve the establishment of compulsory administration over an enterprise, a farm, or a plant forming part of an enterprise, or part thereof, or part of an agricultural farm."
The legislator's intention was likely to limit the abuse of the institution of securing claims in cases falling within the category discussed. Adverse consequences of excessively frequent use of security could arise in cases where entities seeking security sought to eliminate competitors from the market, where such competitors had introduced or planned to introduce a product or service bearing, for example, a similar trademark. Blocking the introduction of such a product to the market has very favorable consequences for the entitled party, but these may be significantly outweighed by the negative consequences for the obligated party. As a result of granting security, the obligated party will incur high costs, for example, related to the liquidation of the manufactured goods, when the final outcome of the case may be quite different from the order specified in the order granting security (see T. Targosz , "Securing Claims in Intellectual Property Law – Prerequisites for Granting and the Specificity of the Proceedings," TPP 2019, No. 1, pp. 99–142).
Referring to the last of the changes mentioned, it should be noted that dismissing a request for injunctive relief if filed after six months from the date on which a party or participant in the proceedings became aware of an infringement of their exclusive rights will also serve to limit the number of intellectual property cases in which injunctive relief is granted. However, this provision may be considered more controversial than the other changes discussed above. Often, a situation may arise where the party whose exclusive rights are being infringed will seek an amicable resolution to the dispute with the infringer, which will often require time due to the need to exchange correspondence between the parties and organize meetings. However, prolonged negotiations may result in the deadline for filing a request for injunctive relief being irrevocably passed.
It should be noted that the changes discussed may contribute to a decrease in the number of cases where security was granted too hastily. The main drawback, however, is that the number of cases that ended in out-of-court settlements will decrease.
This alert is for informational purposes only and does not constitute legal advice.
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