Law & Practice
POLAND: IP Owners Can Demand Evidence from Infringers
Published: June 15, 2020
Beata Wojtkowska Kulikowska & Kulikowski Sp. k. Warsaw, Poland INTA Bulletins Committee - Europe Subcommittee
An amendment to the Polish Industrial Property Law Act (IPL) has entered into force as of February 27, 2020. The amendment covers the change of provisions regulating civil law claims, that is, securing evidence of infringement of industrial property (IP) rights and the so-called information disclosure claim in a manner ensuring due protection of the rights holders. The changes were introduced by the Act amending the IPL and the Act on court costs in civil cases (of October 16, 2020, Journal of Laws of 2019, item 2309).
With this amendment, the owner of an IP right will be able to demand, for instance, the seizure of a reasonable quantity and size of samples of the goods, materials, or tools used in the production or distribution of these goods as well as the related documents to adequately secure evidence of infringement of its rights prior to bringing an action. Obviously, a condition for securing the evidence is substantiation of the claim for infringement of the right or threatened infringement. Art. 286(1), (2) of IPL.
Also, if the rights holder shows credible circumstances demonstrating an infringement of an IP right, it may request the court to order the infringer to provide information about the origin, distribution networks, quantities, and prices of goods or services, that is, all that is necessary for asserting the claim by that rights holder. Art. 286(1) of IPL.
An important change regards the expansion of the group of persons who may be covered by the request to secure evidence. Art. 286(2) of IPL. These requests are now extended to any person who has been found to:
- Possess goods infringing an IP right;
- Be using services that infringe the above rights;
- Provide services used in activities infringing the above rights; or
- Be involved in the production, manufacturing, or distribution of goods or the provision of services infringing an IP right.
The mentioned activities of the above persons must be carried out directly or indirectly for profit or other economic advantage. At the same time, this expansion does not apply to consumers acting in good faith.
If a rights holder obtains intelligence on the scale of potential infringements, it must bring an effective action against the party from whom the information disclosure is requested. If no action against the infringer is subsequently brought by the rights holder within the time limit set by the court, the party providing the information is entitled to claim for remedying the damage caused by the performance of the obligation to provide information under the general rules prescribed in the Civil Code. This claim is subject to the statute of limitation of one year from the date it arose.
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