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New Rules Concerning Interim Relief in Intellectual Property Cases: Advancement or Unnecessary Obstacle?

New Rules Concerning Interim Relief in Intellectual Property Cases: Advancement or Unnecessary Obstacle?

Issue 10.9
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The latest amendments to the Polish Code of Civil Procedure regarding interim relief in intellectual property cases, among other matters, entered into force on July 1, 2023. Interim injunction proceedings are crucial when the parties wish to quickly prevent further infringement of their intellectual property rights and obtain protection for the duration of the main legal proceedings. The main purpose of these proceedings is essentially to secure claims, i.e., to obtain a ruling (order) in which the court will order the opposing party to act in a certain way or prohibit certain actions.

Before the new provisions entered into force, interim injunction proceedings were generally conducted at the first instance ex parte, i.e., without the participation of the defendant. The aim of the amendments was to change the nature of collateral proceedings from an ex parte proceeding to an inter partes proceeding as the default. According to the newly introduced provisions, in order for an application for injunctive relief to be granted in an intellectual property case, the right holders have to not only make the claim plausible and show that they have a legal interest in securing the claim but are now also required to fulfill additional obligations and perform further actions. First of all, the court examines whether there is a likelihood that the aforementioned right will be terminated in other pending proceedings. This circumstance is determined based on information from all of the parties unless it is known to the court ex officio. The above obligation must be preceded by the right holder informing the court whether a termination proceeding is pending vis-a-vis their right, as a lack of such information is now treated as a formal deficiency.

Secondly, the new provisions introduced a new rule that stipulates that any application filed more than six months after learning about the intellectual property infringement will now be automatically dismissed by the court. A delay in the right holder taking action and thus tolerating the violation for too long can and should determine the absence of a legal interest in security, and therefore precludes the need for interim protection. It must, however, be taken into account that a six-month deadline of this kind is not very practical from a business perspective. Companies take various approaches when it comes to addressing the violation of their intellectual property, and their internal procedures could lead to a situation where the six-month term is exceeded simply due to internal compliance. Thus, there is no option to take into account the special circumstances of a particular case and apply, for example, an abuse of rights clause even if there are clear grounds for doing so.

The third main change relates to the confidential nature of the proceedings. Starting from July 1, 2023, the granting of interim relief in intellectual property cases will generally only be possible after hearing from the party against whom such a measure is to be taken. The two exceptions include situations where the requested method of security is enforceable only by a bailiff (e.g., by seizing goods) or where the court decides that it is necessary to issue the decision immediately.

As explained in the justification for the amended provisions, they are necessary due to the unfavorable phenomenon – increasingly observed in practice – relating to the abuse of the injunctive relief institution in disputes between entrepreneurs. Obtaining collateral, consisting of a ban on marketing certain products or services, can serve to effectively eliminate competition, especially given the duration of court proceedings. Amendments to the rules on interim measures proceedings are intended to help reduce the number of unfounded applications for injunctive relief for infringement of intellectual property rights.

However, as the new provisions are currently fairly ambiguous and there is not yet sufficient case law to support their use, entrepreneurs whose businesses rely to a great extent on intellectual property are concerned as to how to use them and whether such use will affect their development in terms of technological and innovative advancement. Generally speaking, however, even though the introduced changes do require further improvements, they should be viewed as positive. They will motivate the right holders to introduce faster and more effective decision-making processes and will enable the development of strategies to protect entrepreneurs against the blocking of their operations in Poland.

By Pawel Halwa, Managing Partner, and Daria Rutecka, Attorney at Law, Schoenherr

This article was originally published in Issue 10.9 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.

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