New proceedings in intellectual property matters

The purpose of introducing new regulations is to facilitate the pursuit of claims related to the protection of intellectual property. The amendment will streamline the hearing of evidence by introducing

• new regulations on security, disclosure and release of evidence,
• a new category of claim: the so-called claim to information – to provide information on the origin and distribution networks of goods and services.

The regulations also introduce a specialized category of intellectual property divisions at regional courts, what aims to streamline the organization of courts.

In accordance with the new regulations, the Regional Court in Warsaw will only have jurisdiction over technically and legally complex cases pertaining to:

• software,
• inventions,
• utility models,
• mask works,
• plant varieties,
• business secrets of technical nature.

The changes will also lead to the creation of a uniform appeal structure in intellectual property matters, including specialized appeal courts established in several central centres.

Categories of intellectual property matters

Following the amendment, the intellectual property matters will include:  

• cases for the protection of copyright and related rights;
• cases for the protection of industrial property;
• cases for the protection of other rights to non-material property,

but also:

• cases for counteracting and combating unfair competition;
• cases for the protection of personal rights, to the extent they concern the use of a personal right for the purpose of individualization, advertising or promotion of an economic operator, goods or services;
• cases for the protection of personal rights in connection with scientific or inventive activity.

Infringement of intellectual property

The Act equates the mere threat of such infringement with infringement of the law. Moreover, it enables the defendant to be ordered to pay the appropriate sum at the discretion of the court also if there is a lack of evidence necessary to prove the exact amount of claim, or if it is extremely difficult or obviously inexpedient to prove it precisely.

The main purpose of the new regulations is most apparent in the provisions governing proceedings to obtain evidence of infringements of intellectual property rights. A distinctive feature of these claims is the difficulty in obtaining evidence of infringements. The interest of the right holder has often been less protected than the trade secret of the infringer. Despite the existence of legal protection measures to force the person required to present the necessary evidence, he usually had the opportunity to evade such an obligation and the lack of regulations providing how to deal in matters pertaining to such critical values ​​as intellectual property law and business secrets did not encourage the courts to take firm and bold actions to even preserve the evidence.

The new section of the Civil Procedure Code aims at filling these gaps by introducing specific regulations on:

• securing of evidence (Article 479⁹⁶ et seq. CCC);  
• disclosure or release of evidence (Article 479¹⁰⁶ et seq. CCC);
• request for information (the so called claim to information) (Article 479¹¹² CCC).

Securing of evidence

Securing of evidence in intellectual property cases constitutes a separate kind of security from other legal concepts specified in Articles 310 and 730 CCC. This proceeding is directed at a person, including a defendant, in whose possession is the evidence or who may ensure its protection. The court decides to preserve the evidence if the claim and legal interest of the right holder are substantiated.

An important novelty is the introduction to the provision on securing an obligatory element in the form of determining how to proceed with the secured evidence, including the degree of access of the authorized person. The court will be able to flexibly define these aspects and, for example, limit or exclude copying or recording of evidence as long as it is sufficient to achieve the purpose of security, and it serves to protect business secret.

The list of security methods is open, i.e. the court may, depending on the circumstances, decide what means of evidence will be appropriate in a given state of facts, but methods of security obviously include actions such as: taking over the goods, materials or tools used for production or distribution, documents, as well as preparing a detailed description of these items combined and, if necessary, with taking their samples.

Motion to secure the evidence is examined immediately after filing, no later than within a week. If the court grants security before the statement of claim is filed, it will immediately set a time limit for its submission, at least two weeks, but no longer than a month.

Disclosure or release of evidence

This action applies to the stage after the claim has been filed when the case is pending before the court. The plaintiff may require the defendant to disclose specific information in his possession. These may include, in particular, bank, financial or commercial documents which serve to reveal or prove the facts. For the motion to be effective, it is necessary to indicate the exact evidence, to substantiate the claim, and also that the defendant actually is in possession of the evidence requested.

The defendant always has the right to submit a reply to motion, and the court requesting him to submit such a reply is obliged to advice on the protection of business secret.

When issuing a decision on disclosure, the court sets out the rules for using evidence and reading it, and also instructs the parties to protect business secrets. Importantly, if the defendant relies on the protection of business secrets, the court – as in the case of security – may lay down specific rules on the use of and access to evidence and may impose additional restrictions.

The decision on disclosure may be appealed to the court of second instance.

The above regulation expresses the legislator’s awareness of how sensitive a data the device of disclosure of evidence may relate to, as well as the fact that it is easy to see a field for abuse of rights by the plaintiff. In this context, it is characteristic to refer several times to the principles of business secret protection at individual stages of examining of the motion.

Regardless of these measures, however, it will depend on the adjudicating court and its understanding of the business practice whether the use of the legal device of disclosure of evidence is conducted while respecting and protecting the legitimate interests of both parties.

Request for information

The request for information is a new legal concept in the field of intellectual property protection. The right holder can use it to obtain information on the origin and distribution networks of goods or services, if it reliably substantiates that its intellectual property rights have been infringed and obtaining this information is necessary for pursuing the claim.

The scope of information the disclosure of which may be requested include:   

• information on the company, place of residence or corporate seat and address of producers, manufacturers, distributors, suppliers and other former owners, anticipated wholesalers or retailers of the given goods and services,
• information on the quantity of goods and services produced, manufactured, sent, received, ordered or rendered, as well as their prices;
• in particularly justified circumstances, other information that is necessary to prove the amount of the claim.

The request may be addressed to the infringer, but in certain cases also to third parties who may be suspected of possessing knowledge relevant to demonstration and pursuit of claims by the right holder.

An interest of the entity obliged to disclose the information is to be balanced by a claim for compensation for damage sustained as a result of  performing the obligation to provide information, if the right holder has not filed a pleading instituting the proceedings against the infringer within the time limit set by the court or the pleading instituting the proceedings has been withdrawn, as well as when the pleading instituting the proceedings was returned or rejected, or the statement of claim or motion was dismissed or the proceedings was discontinued.

This means that when making a claim to information, the right holder should be convinced of its legitimacy and effectiveness, otherwise, if the claim is dismissed, it will create on the part of the right holder the obligation to compensate the disclosing entity.  

It is difficult to assess this regulation at the current stage, but given the complexity of cases on the protection of intellectual property it seems that the threat of a claim for damages in the event of dismissal of an action (for any reason) can effectively deter potential requestors. On the other hand, the sensitive nature of information about which disclosure can be requested should be highly protected, so finding a legal “golden mean” is certainly not easy in this case.

Information disclosure procedure

The disclosure procedure is formalized and multistage. Before the session is scheduled, the court calls on the person obliged to submit the information a reply and instructs on the protection of business secret as well as the right to refuse information. It may also, as in the case of evidence, lay down rules for reading information. The decision may be appealed to the court of second instance.

Counterclaim  

The amendment introduces in intellectual property matters regarding trademark or industrial design rights the possibility of a counterclaim, but only if it contains requests for annulment or revocation of these rights.

Another regulated proceedings is a separate proceedings to determine that the actions taken or intended by the plaintiff do not constitute a breach of the patent, additional protection right, protection right or right in registration.

 Changes in the right direction

Although we have to wait to assess the introduced regulations, it seems they are in the right direction. In particular, the practical facilitation of seeking evidence by infringed entities can increase the effectiveness of legal protection. Undoubtedly, creation within the judiciary a specialized team of judges dealing only with such cases will also – like any specialization – have a positive impact on the quality of judgments. One can have concerns about the efficiency of judiciary system, especially in view of the hitherto unclear technical aspects of creating intellectual property divisions in regional courts, nevertheless the assumptions behind the introduced solutions seem to be right.

Author:

 

Intellectual property

The purpose of introducing new regulations is to facilitate the pursuit of claims related to the protection of intellectual property. The amendment will streamline the hearing of evidence by introducing

• new regulations on security, disclosure and release of evidence,
• a new category of claim: the so-called claim to information – to provide information on the origin and distribution networks of goods and services.

The regulations also introduce a specialized category of intellectual property divisions at regional courts, what aims to streamline the organization of courts.

In accordance with the new regulations, the Regional Court in Warsaw will only have jurisdiction over technically and legally complex cases pertaining to:

• software,
• inventions,
• utility models,
• mask works,
• plant varieties,
• business secrets of technical nature.

The changes will also lead to the creation of a uniform appeal structure in intellectual property matters, including specialized appeal courts established in several central centres.

Categories of intellectual property matters

Following the amendment, the intellectual property matters will include:  

• cases for the protection of copyright and related rights;
• cases for the protection of industrial property;
• cases for the protection of other rights to non-material property,

but also:

• cases for counteracting and combating unfair competition;
• cases for the protection of personal rights, to the extent they concern the use of a personal right for the purpose of individualization, advertising or promotion of an economic operator, goods or services;
• cases for the protection of personal rights in connection with scientific or inventive activity.

Infringement of intellectual property

The Act equates the mere threat of such infringement with infringement of the law. Moreover, it enables the defendant to be ordered to pay the appropriate sum at the discretion of the court also if there is a lack of evidence necessary to prove the exact amount of claim, or if it is extremely difficult or obviously inexpedient to prove it precisely.

The main purpose of the new regulations is most apparent in the provisions governing proceedings to obtain evidence of infringements of intellectual property rights. A distinctive feature of these claims is the difficulty in obtaining evidence of infringements. The interest of the right holder has often been less protected than the trade secret of the infringer. Despite the existence of legal protection measures to force the person required to present the necessary evidence, he usually had the opportunity to evade such an obligation and the lack of regulations providing how to deal in matters pertaining to such critical values ​​as intellectual property law and business secrets did not encourage the courts to take firm and bold actions to even preserve the evidence.

The new section of the Civil Procedure Code aims at filling these gaps by introducing specific regulations on:

• securing of evidence (Article 479⁹⁶ et seq. CCC);  
• disclosure or release of evidence (Article 479¹⁰⁶ et seq. CCC);
• request for information (the so called claim to information) (Article 479¹¹² CCC).

Securing of evidence

Securing of evidence in intellectual property cases constitutes a separate kind of security from other legal concepts specified in Articles 310 and 730 CCC. This proceeding is directed at a person, including a defendant, in whose possession is the evidence or who may ensure its protection. The court decides to preserve the evidence if the claim and legal interest of the right holder are substantiated.

An important novelty is the introduction to the provision on securing an obligatory element in the form of determining how to proceed with the secured evidence, including the degree of access of the authorized person. The court will be able to flexibly define these aspects and, for example, limit or exclude copying or recording of evidence as long as it is sufficient to achieve the purpose of security, and it serves to protect business secret.

The list of security methods is open, i.e. the court may, depending on the circumstances, decide what means of evidence will be appropriate in a given state of facts, but methods of security obviously include actions such as: taking over the goods, materials or tools used for production or distribution, documents, as well as preparing a detailed description of these items combined and, if necessary, with taking their samples.

Motion to secure the evidence is examined immediately after filing, no later than within a week. If the court grants security before the statement of claim is filed, it will immediately set a time limit for its submission, at least two weeks, but no longer than a month.

Disclosure or release of evidence

This action applies to the stage after the claim has been filed when the case is pending before the court. The plaintiff may require the defendant to disclose specific information in his possession. These may include, in particular, bank, financial or commercial documents which serve to reveal or prove the facts. For the motion to be effective, it is necessary to indicate the exact evidence, to substantiate the claim, and also that the defendant actually is in possession of the evidence requested.

The defendant always has the right to submit a reply to motion, and the court requesting him to submit such a reply is obliged to advice on the protection of business secret.

When issuing a decision on disclosure, the court sets out the rules for using evidence and reading it, and also instructs the parties to protect business secrets. Importantly, if the defendant relies on the protection of business secrets, the court – as in the case of security – may lay down specific rules on the use of and access to evidence and may impose additional restrictions.

The decision on disclosure may be appealed to the court of second instance.

The above regulation expresses the legislator’s awareness of how sensitive a data the device of disclosure of evidence may relate to, as well as the fact that it is easy to see a field for abuse of rights by the plaintiff. In this context, it is characteristic to refer several times to the principles of business secret protection at individual stages of examining of the motion.

Regardless of these measures, however, it will depend on the adjudicating court and its understanding of the business practice whether the use of the legal device of disclosure of evidence is conducted while respecting and protecting the legitimate interests of both parties.

Request for information

The request for information is a new legal concept in the field of intellectual property protection. The right holder can use it to obtain information on the origin and distribution networks of goods or services, if it reliably substantiates that its intellectual property rights have been infringed and obtaining this information is necessary for pursuing the claim.

The scope of information the disclosure of which may be requested include:   

• information on the company, place of residence or corporate seat and address of producers, manufacturers, distributors, suppliers and other former owners, anticipated wholesalers or retailers of the given goods and services,
• information on the quantity of goods and services produced, manufactured, sent, received, ordered or rendered, as well as their prices;
• in particularly justified circumstances, other information that is necessary to prove the amount of the claim.

The request may be addressed to the infringer, but in certain cases also to third parties who may be suspected of possessing knowledge relevant to demonstration and pursuit of claims by the right holder.

An interest of the entity obliged to disclose the information is to be balanced by a claim for compensation for damage sustained as a result of  performing the obligation to provide information, if the right holder has not filed a pleading instituting the proceedings against the infringer within the time limit set by the court or the pleading instituting the proceedings has been withdrawn, as well as when the pleading instituting the proceedings was returned or rejected, or the statement of claim or motion was dismissed or the proceedings was discontinued.

This means that when making a claim to information, the right holder should be convinced of its legitimacy and effectiveness, otherwise, if the claim is dismissed, it will create on the part of the right holder the obligation to compensate the disclosing entity.  

It is difficult to assess this regulation at the current stage, but given the complexity of cases on the protection of intellectual property it seems that the threat of a claim for damages in the event of dismissal of an action (for any reason) can effectively deter potential requestors. On the other hand, the sensitive nature of information about which disclosure can be requested should be highly protected, so finding a legal “golden mean” is certainly not easy in this case.

Information disclosure procedure

The disclosure procedure is formalized and multistage. Before the session is scheduled, the court calls on the person obliged to submit the information a reply and instructs on the protection of business secret as well as the right to refuse information. It may also, as in the case of evidence, lay down rules for reading information. The decision may be appealed to the court of second instance.

Counterclaim  

The amendment introduces in intellectual property matters regarding trademark or industrial design rights the possibility of a counterclaim, but only if it contains requests for annulment or revocation of these rights.

Another regulated proceedings is a separate proceedings to determine that the actions taken or intended by the plaintiff do not constitute a breach of the patent, additional protection right, protection right or right in registration.

 Changes in the right direction

Although we have to wait to assess the introduced regulations, it seems they are in the right direction. In particular, the practical facilitation of seeking evidence by infringed entities can increase the effectiveness of legal protection. Undoubtedly, creation within the judiciary a specialized team of judges dealing only with such cases will also – like any specialization – have a positive impact on the quality of judgments. One can have concerns about the efficiency of judiciary system, especially in view of the hitherto unclear technical aspects of creating intellectual property divisions in regional courts, nevertheless the assumptions behind the introduced solutions seem to be right.

Author:

Bartłomiej Urbanek
Senior Associate, Advocate
TGC Corporate Lawyers

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