New provisions on securing claims in intellectual property cases – changes from 1 July 2023

On 1 July 2023, the provisions amending the Code of Civil Procedure (CCP) came into force. They changed the rules for submitting motions for securing claims in intellectual property cases. Below we explain the key issues of the amendment.

Six-month time limit for lodging a motion to secure claims

The fundamental change in proceedings to secure claims that took place under the amendment to the Code of Civil Procedure is the introduction of a six-month time limit for filing a motion to secure claims. Pursuant to Art. 755 §2³ CCP “in the cases listed in Art. 479⁸⁹, the court shall dismiss the motion to secure claims if it is filed after 6 months from the date on which a party or participant to the proceeding became aware of the infringement of its exclusive right.”

The cases we discuss concern the protection of copyright and related rights, industrial property rights and other intangible property rights (intellectual property cases). Intellectual property cases (according to Art. 479⁸⁹ CCP) also include cases concerning the prevention and combating of unfair competition, protection of personal rights in so far as they concern the use of personal rights for the purpose of individualization, advertising or promotion of an entrepreneur, goods or services, as well as protection of personal rights in connection with scientific or inventive activities.

These are cases examined in contentious proceedings, which is why it is surprising that the legislator used the alternative “party or participant”, as we can refer to a participant to the proceedings only in non-contentious proceedings.

The introduction of a fixed time limit for submitting a motion to secure claims raises some doubts, as such an inflexible approach in this matter may result in insufficient protection of the right holder, by not giving the right holder sufficient time to take action, in this case to prepare and submit the motion. In addition, a specialised intellectual property court must dismiss the motion after the expiry of that six-month time limit. There is therefore no option to take into account, for example, the specific circumstances of the case or to apply, for example, the abuse of rights clause, even if there are clear grounds for doing so.

On the other hand, a six-month time limit is calculated from the date on which a party became aware of the infringement of its exclusive right. Such regulation means that dismissal of the motion by the court may prove difficult. It is worth noting the wording of Art. 736 §1 CCP, which does not require a party to indicate in the motion to secure claims the time that has elapsed since the party became aware of the infringement. Of course, under Art. 736 §5 CCP, the motion should include information on whether the proceedings to invalidate the exclusive right is or was pending or a statement of no knowledge of such proceedings, but it is not explicitly required to indicate when such separate proceedings were initiated.

The structure of the new provision seems to suggest that the court examining the motion to secure claims should determine on its own all the circumstances that will allow to assess whether six months have elapsed from the date on which the party became aware of infringement of its exclusive right.

It is worth emphasizing that the application of new Art. 755 § 2³ may only frustrate the granting of injunctive relief, but does not preclude the possibility to find the claim justified. In this case, the general rules on statutes of limitation and strict time limits will apply.

Adversarial nature of proceedings to secure claims

Another important change in force from July 2023 regarding the proceedings for securing claims is the introduction of the adversarial principle consisting in allowing both parties to contest the statement of facts and the legal grounds brought against them. Under the new Art. 755 §2² CCP,  “the court grants security after hearing the obligor, unless it is necessary to promptly decide on the motion. This does not apply to methods of security enforceable only by a bailiff or consisting in the establishment of compulsory administration over an undertaking or an agricultural holding or an establishment forming part of the undertaking or part thereof or part of an agricultural holding’.

The new provision will certainly have a positive impact on the course of proceedings to secure claims, by providing the obligor with the opportunity to be heard and unifying the approach of the courts. In addition, it should be assessed that this is a good step towards adapting Polish regulations to the regulations in force in other EU countries. The justification to the bill indicates that this provision is a response to an unfavourable phenomenon consisting in the abuse of legal device of securing claims in cases concerning infringement of intellectual property rights, which in consequence may serve to effectively eliminate or significantly reduce competition. This is an important measure which sets aside the general rule according to which an injunctive order is issued without the participation of the obligor.

Thus, the general rule in intellectual property cases is now to hear the obligor. The only exception to this rule is when it is necessary to promptly decide on the motion. This is a vague expression which gives the court examining the motion some latitude in its assessment of the facts on which the motion is based.

Substantiating the claim and likelihood of invalidation of an exclusive right

Amendment to the Code of Civil Procedure of 9 March 2023 introduced another new provision on the assessment of plausibility of a claim in intellectual property cases. Under the new Art. 730¹ §1¹ CCP, “in the cases listed in Art. 479⁸⁹, the court, when assessing whether a claim is substantiated, takes into account the likelihood of invalidation of the exclusive right in other pending proceedings. This fact shall be established on the basis of information from the parties, unless it is known to the court ex officio.”

According to the amendment, the right holder must include in the motion information whether proceedings for invalidation of an exclusive right is or was pending or include astatement of a party or participant to the proceedings of no knowledge of such proceedings. The court, on the other hand, is obliged to examine whether the likelihood of invalidation of the right in a situation is high and, if so, whether to dismiss the motion to secure claims.

To sum up, the changes in the regulation on proceedings to secure claims are intended to reduce the number of unfounded motions to secure claims for infringement of intellectual property rights. At the same time, they also introduce an important adversarial principle, which may contribute to reducing the often excessive protection given to plaintiffs and speed up the examination of such court cases. In view of the above, the changes to the regulations under the 2023 amendment to the Code of Civil Procedure should be considered positive.