Procedure
Poland
General infringement proceedings
Types of infringement proceedings:
- Preliminary injunction proceedings: The court competent in main proceedings may issue a preliminary injunction (PI) to secure monetary and non-monetary claims, in particular by stopping the sale of the infringing goods or services and/or seizing the infringing goods. In principle, PI proceedings concerning the IP rights are of inter parte character, ie the court allows the other party to present the statement of defence, unless it is necessary to immediately decide on a PI or the PI is to be carried out by a bailiff (eg seizure of infringing goods). The trade mark owner may also concurrently exercise the rights of information (eg with respect to sales data) or request measures for disclosing, releasing and preserving evidence. The application for granting a PI may be lodged prior to the main proceedings and included in the statement of the claim or lodged during the proceedings.
- Main proceedings: After the court issues the PI, the claimant must lodge a statement of the claim within the deadline set by the court (up to 14 days). In the main proceedings, the claimant may request injunctive relief (ie order to refrain from infringement), destruction of infringing goods, removal of infringing goods from the market or publication of the judgment. The damages may be requested based on general principles or in the form of a payment reflecting a licence fee or other appropriate remuneration, which would have been due for the use of the trade mark. The claimant may also demand the return of unjustified benefits (also based on general principles or in the form of a payment reflecting a licence fee or other appropriate remuneration).
Procedure and appeals
- Warning letter: Although sending a cease and desist letter is not mandatory, Polish rules of civil procedure require an indication in the statement of the claim whether the parties attempted to resolve the dispute out of court or to explain why such an attempt wasn’t undertaken. It is good market practice to send a warning letter prior to starting a court action, as it may affect the court's subsequent decision regarding reimbursement of the costs of court proceedings.
- First instance: Trade mark infringement cases are recognised and decided by five specialised IP courts:
- The District Court in Warsaw.
- The District Court in Gdańsk.
- The District Court in Katowice.
- The District Court in Lublin.
- The District Court in Poznań.
- Court of Appeal: The Appeal Courts in Warsaw and Poznan have exclusive competence to recognise appeals in trade mark cases. To appeal the first instance judgment, it is necessary to request the court to serve the written grounds within one week of the judgment.. Time to appeal is two weeks from when the written grounds are served. Time to appeal from a PI decision is one week from when the decision is served.
Means of proof and burden of proof
The general rule is that the party who wishes to achieve legal effects from a given fact must prove that fact. Any argument relevant to the case should, therefore, be supported by relevant evidence. In principle, it is the claimant (trade mark owner) who should prove the trade mark infringement, its relevant circumstances and the merits of the claims. Accordingly, the trade mark owner should provide documents, out-of-court correspondence, agreements, printouts from the internet (which are often provided in the form of notarial deeds confirming the infringing content available online), samples of infringing products together with documents related to the test purchase, bailiff’s report on the seized goods. Foreign language documents must be translated into Polish. The trade mark owner may also request the examination of witnesses and hearing of parties. Private expert opinions are also frequently provided, still usually as auxiliary evidence which cannot replace a court expert opinion in the event a specialised knowledge is required to decide the case.
In PI proceedings the standard of proof is more relaxed. It is sufficient for the claimant to substantiate the relevant claims and the legal interest in issuing PI measures.
(No) discovery
At this stage of the court proceedings, the claimant who substantiated the claim may request that the defendant disclose or release evidence in their possession, in particular bank, financial or commercial documents, for the purpose of disclosing or proving facts.
In addition, the trade mark owner/claimant may request the following from the infringer/defendant:
- Information on company name, place of residence or registered office and address of manufacturers, producers, distributors, suppliers and other previous holders from whom goods were acquired or to whom they were sold, who provided services or to whom services were provided, as well as the intended wholesalers and retailers of those goods or services.
- Information on the quantity of goods produced, manufactured, sent, received or ordered, or services provided, as well as prices received in exchange for those goods or services.
- In particularly justified circumstances, other information necessary to prove the amount of claim.
The requests relating to the right to information may be lodged prior to the main proceedings and be included in the statement of the claim or lodged during the proceedings. If the request is granted before court proceedings, the claimant must lodge a statement of the claim within the deadline of a month.
Time to judgment
- The decision in preliminary injunction proceedings is usually issued within a few weeks. In the case of inter partes proceedings, it may take longer given that the infringer is requested to reply to the PI request within the time limit set by the court.
- For main proceedings, a judgment of the first instance court can usually be expected within one to two years. In practice, the proceedings are suspended fairly often by the court due to the separate trade mark invalidation action started by the defendant in the Polish Trade Mark Office (TMO) or the European Union Intellectual Property Office (EUIPO).
Claiming legal costs and securities
In settling the dispute, the court will also consider whether and to whom a party should reimburse the costs of the proceedings. As a rule, the losing party bears these costs, although the court may exceptionally require the winning party to reimburse the costs if it obstructed the proceedings. If the claim is only partially successful, the court will generally divide the costs proportionally. However, Polish law also limits the reimbursement of the attorneys' costs to the party that has won the case and, usually, they are capped at a substantially lower level than the cost of lawyers actually incurred by the given party.