IP courts: Changes in proceedings for protection of intellectual property
The latest amendment to the Civil Procedure Code enters into force on 1 July 2020, aimed at creating specialised courts handling intellectual property matters.
The current picture
Currently, intellectual property cases in Poland are handled by several different institutions. Infringement cases are heard by the common courts, primarily in the commercial divisions (cases between businesses), but some of these disputes are also heard in the civil divisions of the courts.
Meanwhile, since 2004 one specialised division of the Warsaw Regional Court (22nd Division—Court of EU Trademarks and Community Designs) has had exclusive jurisdiction to hear disputes from all over the country involving EU trademarks and Community designs.
Apart from cases heard by the common courts, in light of the registration track for obtaining industrial property rights (to trademarks, patents, industrial designs, and utility models), complaints against decisions issued by the Polish Patent Office on issuance, invalidation or revocation of these rights are considered by the administrative courts.
With entry into force of the amendment to the Civil Procedure Code, the common courts will also gain limited jurisdiction to rule on the validity of protective rights to trademarks and industrial designs. From 1 July 2020, in a dispute alleging infringement of a trademark or industrial design, the defendant will be allowed to seek invalidation of such rights (and also revocation in the case of trademarks) before the common court, via a counterclaim. This approach is patterned on the existing rules for disputes involving EU trademarks and Community designs.
Aim of amendment
According to the justification for the bill, the aim of introducing these regulations is to allow judges to specialise in intellectual property matters and to unify and improve the quality of the rulings issued in this area. The bill calls for appointment of specialised divisions operating at the regional courts, to be located in Gdańsk, Poznań, Warsaw, Lublin and Katowice. All of these courts are to be simultaneously competent to hear cases involving EU trademarks and Community designs in place of the existing specialised division of the Warsaw Regional Court.
Intellectual property cases
The amending act introduces into the Civil Procedure Code a new category of judicial matters, intellectual property cases, which are to be subject to the exclusive jurisdiction of the newly created specialised divisions. Apart from cases involving protection of copyright and related rights, industrial property rights and other intangibles (e.g. involving protection of databases), all of which naturally fall within this category, it was decided to vest the IP courts also with the jurisdiction to hear:
- Cases on preventing and combating unfair competition
- Cases on protection of personal interests insofar as they involve exploitation of personal interests for the purpose of individuation, advertising or promotion of an undertaking, goods or services
- Cases on protection of personal interests connected with science or inventions.
It was also decided that all cases involving protection of computer programmes, inventions, industrial models, topographies of integrated circuits, plant varieties, and trade secrets of a technical nature will be considered exclusively by the Warsaw Regional Court, which is to become a kind of specialist “tech court.” In the proponents’ view, concentrating technical cases in a single court should increase the efficiency and speed of the proceedings.
Undoubtedly, at the start of applying the new law, defining the types of cases involving protection of personal interests which are to be heard by the new courts will generate problems. According to the justification for the bill, the concept of entrusting ruling in certain categories of cases involving personal interests to specialised venues results from an observed trend toward commercialisation of personality rights such as likeness. But at the same time, the drafters did not clarify what other personal interests, apart from likeness, they had in mind when creating these subcategories of cases. It may be expected that cases involving protection of name, likeness, scientific and creative works, reputation and goodwill in the case of legal persons and other business entities will reach these specialised courts.
Inclusion in this category of cases seeking to protect the memory of the decedent by protecting the work of deceased authors may pose a problem. This construction is employed in cases brought by heirs of authors of creative works, who rely on the personal interest of cultivating the memory of the deceased to protect the reputation of deceased relatives, combating instances of appropriation of authorship of their works or distortion of the meaning of their works. Although cases of this type do not appear to fall within the category of intellectual property cases defined in the new Art. 47989 of the Civil Procedure Code, the aim of the amendment and the related specialisation speaks in favour of regarding them as intellectual property cases.
Another set of cases that may present difficulties within the broad range of intellectual property cases set forth by the parliament are cases involving trade secrets of a technical nature. It may be inferred that the drafters had in mind here primarily protection of unpatented inventions, protected as knowhow in light of the enterprise’s adopted business strategy. But undoubtedly the range of such cases is much broader, which will make it necessary in litigation over trade secrets to analyse the technical nature of the trade secrets in each case before initiating proceedings.
New courts will also hear contract disputes
Cases involving performance of contracts in the area of intellectual property rights, trade secrets, and exploitation of the categories of personal interests discussed above (e.g. contracts granting a licence to use a person’s likeness for an ad campaign) will also be assigned to the newly created courts. Although not all disputes over contract performance require special knowledge of the regulations governing intangible interests, and can be resolved in many cases by applying knowledge of general instruments of civil law, the parliament recognised that it would also be a good idea to assign such cases to the jurisdiction of specialised courts. The justification for introducing this solution is the view that in the event of invalidation of the contract that is the basis for a claim, the case should be considered on the basis of the regulations governing use and protection of the right or interest in question. Thus all disputes arising out of contracts governing the exploitation of intellectual property rights or personal interests as defined by the amendment (e.g. for payment of fees for transfer of rights, royalties, or infringement of exclusivity) will be heard by these specialised courts regardless of the amount in dispute.
Consequences of improper filing
The ambiguity in these regulations will be manifest in the procedural consequences of filing claims with the improper court. Although a case filed with a court that is improper for the geographical location or subject matter will ultimately be taken up and considered, this will happen with some delay due to the need to follow the procedure for forwarding the case files. Moreover, the lack of clarity in the regulation defining the jurisdiction of the intellectual property courts may lead to obstruction by defendants exploiting this situation to delay the proceedings.
Acknowledging the difficulties in defining the notion of “intellectual property cases,” the drafters indicated in the justification for the bill that this notion will be clarified through the case law, via orders issued by courts of second instance hearing interlocutory appeals against orders holding that the intellectual property courts lack jurisdiction. But it will take some time for such systemic case law to develop.
IP procedure and other separate procedures
Apart from the appropriate assignment of cases to the category of intellectual property cases, the overlapping of other procedural regulations governing separate proceedings may also generate problems in practice.
According to the amending act, the regulations governing intellectual property proceedings are to be applied alongside other separate regulations, such as regulations in commercial cases, employment cases, and order-for-payment and summary proceedings. In the event of a conflict in these procedures, however, the provisions on intellectual property cases will take priority. This rule will be relevant primarily for the possibility of filing a counterclaim for invalidation or revocation of rights (in disputes over trademarks or industrial designs). This is because counterclaims are otherwise impermissible in commercial or order-for-payment proceedings.
At the same time, the regulations on proceedings in IP cases do not introduce any modifications or exceptions to the rules on the possibility of amending claims after filing. This means that if cases are considered under the commercial or order-for-payment procedure, provisions prohibiting amendment of the claim in terms of subject matter and entities will apply. So if additional infringers are revealed or the holder of IP rights obtains more detailed information about the infringement only during the course of the proceeding (e.g. through exercise of claims seeking information), the claimant will not be allowed to expand the relief sought through the order for payment or to modify the stated monetary claims.
In commercial cases involving IP, restrictions concerning concentration of evidence will also apply, as will the regulations governing the new institution of an evidentiary agreement, and the rule of the precedence of documentary evidence over witness testimony.
Ewa Nagy, attorney-at-law, Intellectual Property practice, Wardyński & Partners