IP courts and changes in intellectual property proceedings
As early as the 1st of July, an amendment to the Code of Civil Procedure will enter into force, introducing specialised courts for intellectual property matters (IP Courts) into the common court system. The purpose is to ensure efficient resolution of intellectual property cases by specialised judges.
Upon entry into force of the amendment, the Regional Court in Warsaw, as the court specializing in intellectual and industrial property matters, will have exclusive jurisdiction in cases concerning computer programs, inventions, utility models, topographies of integrated circuits, plant varieties and technology-related business secrets. Other intellectual property cases will be heard in first instance by regional courts in Warsaw, Poznan, Lublin and Gdansk, and in second instance by specialised divisions of courts in Warsaw and Poznan.
The IP courts will replace the EU Trademark and Community Design Court (22nd Division of the Regional Court in Warsaw) with respect to cases concerning EU trademarks and Community designs. Importantly, it will be the IP Courts themselves that will decide whether they have jurisdiction in a given case. If they find that they are not competent, they will be able to transfer the case to another court, including returning the case to that court from which they received it.
What kind of cases will be heard by IP Courts?
Pursuant to the new regulations, intellectual property matters will comprise the protection of copyright and related rights, the protection of industrial property rights and of other rights in intangible assets, and also cases for the prevention and combating of unfair competition, the protection of personal rights (in respect of the use of personal rights to individualise, advertise or promote businesses, goods or services), and matters concerning the protection of personal rights in connection with scientific or invention based activities
However, the amended provisions will not apply to intellectual property cases pending at the time of entry into force of the amendment.
Who will be able to act before IP Courts?
Pursuant to the amendment, in cases where the amount in dispute exceeds PLN 20,000 the parties must be represented before the IP Court by professional attorneys – advocates, attorneys at law or patent attorneys.
What will be the changes in intellectual property proceedings?
The purpose of the changes is primarily to standardise and streamline procedural means of collecting evidence of intellectual property rights infringements and proving the related claims. In proceedings before IP Courts, a party seeking protection will be entitled to, among other things, move for securing evidence before or during the proceedings. Depending on the nature of the case, the court may grant security by, i.a., seizing the goods, materials or tools used in production or distribution, documents, or by making a detailed description of those items combined, if necessary, with taking samples. In addition, the claimant who has substantiated the claim, will be allowed to demand that the infringer disclose or provide evidence being at his disposal, i.e. bank, financial or commercial documents. If the defendant evades compliance with this obligation, the court may consider the matter which was to have been established from such evidence as fact and order the defendant to pay the costs of the proceedings, in whole or in part, irrespective of the outcome of the case. The defendant will also be able to request that the infringer be required to provide information on the origin and distribution networks of the goods or services before the commencement of or during the infringement proceedings, if this is necessary to pursue the claim.
The amendment also provides for new means of defence against allegations of infringement of third party IP rights in the form of a counterclaim for invalidation of rights to trademarks and industrial designs and an action for establishment of no infringement of third party exclusive rights. Until now, a declaration of invalidity of a registration right had to be decided by the patent office, which significantly extended the duration of the proceedings. With the possibility of the case being resolved by a common court in IP proceedings, the time required to obtain a decision will be significantly reduced.
Are the changes beneficial?
Changes in the IP judiciary are undoubtedly necessary. IP cases are unique and difficult in terms of evidence and require specialised expertise from both the judiciary and participants. The new changes appear to be going in the right direction, but the effectiveness of these specific solutions may only really be assessed after several months of applying the new regulations by courts and attorneys.
Attorney at Law, Partner, Head of FMCG, Retail & Automotive and Trade & Distribution Law Practices
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