Poland: legislative amendments could help to better enforce cessation claims under IP law
A problem in protecting intellectual property rights was ensuring the effectiveness of court orders that infringement of those rights cease; a proprietor did not have fully effective measures to be able to enforce such an order.
The reason was mainly that enforcement measures were archaic. A court was able to fine a defendant that breached a court order, but only the amount that was fixed by law; the first three fines could not exceed approx. 250 Euro or the total in one case approx. 25 000 Euro and those limits were in fact rarely ordered. Such thresholds were unrealistic and, therefore, were not a deterrent. Furthermore, fines were paid to the state treasury. In the circumstances, a plaintiff was bereft of the possibility of being able to effectively enforce rights against a defendant, who often blatantly defied the authority and orders of a court.
On 3 May 2012 amendments to the Polish Civil Procedure Code came into force. The amendments:
- strengthen methods of enforcing non-pecuniary court orders, including orders for cessation;
- provide a novel method of securing pre-litigation claims.
A court will now be able to fine up to approx. 2 500 Euro and if fining twice does not have effect, a court will be able to fine any amount up to approx. 250 000 Euro in any one matter.
A new measure is a payment of a penalty. A claimant will now be able to motion a court to order, instead of a fine, payment of a penalty for an infringement that breaches an order for cessation. The payment is set by the court and:
- is not limited legislatively, and will only have to be commensurate to the obligations of a defendant and not be onerous;
- is to be paid to a claimant.
The measure will also be available to enforce interim injunctions that order cessation.
We assess the amendments to be positive. They are a practical solution that suit commercial reality and will enable better enforcement of intellectual property rights. It, however, remains to be seen how the amendments operate in practice.
Intellectual Property Practice, Wardyński & Partners