IP courts: Cancellation of trademarks and industrial designs not only before the Patent Office


In our latest article on intellectual property courts, we discuss the provision enabling defendants to assert claims in their defence against claims of infringement of trademarks and industrial designs. Currently, it is possible to file a counterclaim seeking invalidation or revocation only in the case of EU trademarks (Regulation (EU) 2017/1001) and Community designs (Regulation (EC) 6/2002). This will change from 1 July 2002, when defendants will be allowed to file such counterclaims also in proceedings in Poland involving national IP rights.

Current division of jurisdiction

In cases seeking protection of national trademarks and industrial designs, jurisdiction is divided between the Polish Patent Office and the administrative courts on one hand, and the common courts and Supreme Court on the other. The Patent Office has had exclusive jurisdiction to award industrial property rights and assess their validity. The common courts, for their part, have assessed the justification of claims for protection of such rights filed by proprietors or licensees in civil proceedings, but have not been competent to rule on whether the right that is the basis for the clam was properly granted and should remain in force.

Thus to dispute the validity of the rights underlying infringement claims, the defendant has had to initiate a proceeding before the Patent Office for invalidation or revocation of the IP right in question. Commencement of this procedure did not automatically stay the infringement proceeding before the common court. Thus defendants in infringement cases had to apply for a stay of the civil proceeding until a legally final decision on cancellation of the right was issued. The courts approached stay applications cautiously, pointing out that under Art. 177 §1(3) of the Civil Procedure Code, granting a stay is optional, not mandatory. This has meant that parallel cases have been ongoing over infringement of patents, trademarks or industrial designs before the common courts, alongside administrative proceedings seeking a decision invalidating such rights retroactively (ex tunc) or a declaration revoking protective rights to a trademark from the date indicated in the decision, based on the factual findings in the case.

Greater authority of common courts

From 1 July 2020, defendants in litigation seeking protection of rights to national trademarks and industrial designs will be able to effectively challenge the correctness and validity of rights granted by the Polish Patent Office by filing a counterclaim in the proceeding before the common court. The amending act has thus vested the common courts with a portion of the jurisdiction previously reserved exclusively to administrative bodies and the administrative courts. The ability to assert a counterclaim for invalidation or revocation is also provided for defendants based on collective trademarks, guarantee trademarks, and recognition in Poland of an international trademark or international industrial design. It will still be possible to file a counterclaim for invalidation or revocation of rights in proceedings for protection of an EU trademark or Community design. As we reported, from 1 July 2020 such cases will be heard at the first instance by four regional courts, and not, as is now the case, exclusively by the Warsaw Regional Court. But it will still be impermissible to challenge the validity of a patent or utility model via a counterclaim.

It will be possible to file a counterclaim within the time provided under the general rules (Civil Procedure Code Art. 204), i.e. at the latest upon filing of the response to the statement of claim or, if a response was not filed, in the objection to a default judgment or upon commencement of the first session for which the defendant was notified or summoned.

According to the regulations, the court will be bound not only by the factual basis for the claim, but also the legal basis (Civil Procedure Code Art. 479124) of the counterclaim for invalidation or revocation of the right, and thus by the ground asserted by the counterclaimant which should allegedly lead to invalidation or revocation of the right. Provisions of the Industrial Property Law will apply in such cases insofar as they are not inconsistent with the procedural regulations governing separate proceedings in intellectual property cases.

The parliament has also provided for a mechanism for the competent authorities to keep each other informed of decisions on the validity of rights to trademarks and industrial designs. In the case of filing of a counterclaim, the court will be required to request information from the president of the Patent Office on whether there is a case already pending before the Patent Office for invalidation or revocation of the right in question. If there is, the court will stay the judicial proceeding until the legally final completion of the proceeding before the Patent Office. The court will also stay the proceeding at its own initiative if there is another civil proceeding pending at the same time demanding the same relief as that sought in the counterclaim.

If it appears from the information provided that the Patent Office has already issued a legally final decision on the given right, the court will be required to dismiss the counterclaim, if the decision concerns the same subject matter in dispute, including the same grounds as the counterclaim.

A judgment in the civil proceeding on invalidation or revocation of rights will also be effective against third parties, and the court conducting the proceeding will be required to send a copy of the judgment promptly to the Patent Office so that an appropriate entry can be made in the register, and to notify the International Bureau of Intellectual Property at the World Intellectual Property Organization.

A counterclaim seeking invalidation of a trademark or industrial design, or revocation of a trademark, will be subject to a fixed filing fee of PLN 1,000.

Ewa Nagy, attorney-at-law, Intellectual Property practice, Wardyński & Partners