Preliminary injunctions in Polish law – changes from 1 July 2023

15 Dec 2023 | Newsletter

Podbielska Janicka
Magdalena Podbielska-JanickaFert Jakubiak Wróblewski patent and trademark attorneys, Poland

On July 1, 2020 the IP specialized courts in Poland were created. We now have five 1st instance courts (the Regional Courts), and Two 2nd instance courts (The Courts of Appeal) which are dealing with cases concerning:

  • Copyrights, including software,
  • Industrial property rights, so: trademarks, designs, patents, utility models;
  • Unfair competition;
  • Personal rights in relations to promotion, advertising, research activities, including rights relating to the personality.

The reason for creating this courts was clear: specialized judges and harmonization of jurisprudence.

The activities of the courts and their established practices resulted in the need for changes in the law. After 3 years of activity, regulations came into force changing, among other things, the principles of preliminary injunctions proceedings. In this article I elaborate on the three most important changes.

First change – obligation to hear

As a rule, the preliminary injunctions proceedings aim to quickly block violation of IP rights. An important element in this procedure is the surprise effect. This means that the infringer cannot prepare (for example, selling out its products). Before the changes, the court was required to rule on the case within the week. There was no obligation to hear the infringer. In only a few cases did the judges decide to deliver the motion to the infringer and wait for its statement until judging. The order of granting preliminary injunction was delivered only to the owner of the right, if it was subject to bailiff execution.

This has changed significantly. Now there is an obligation to hear the infringer.[1]

Delivering the motion to the infringer is a standard procedure. There are some exemptions to this rule:

  1. if the case must be handled immediately;
  2. if the order is fully enforceable by the bailiff for example when the seizure of goods is granted;
  3. if the order contains compulsory administration of the company or agricultural enterprise.

As the third situation is usually not the case of IP infringement, there are doubts about what is meant when the case must be handled immediately or what if the order is enforceable by the bailiff only partially.

Second change – assessing infringement

Any party may request preliminary injunction if it substantiates the claim and the legal interest in granting security[2]. If the infringement is well substantiated and obvious the legal interest appears in that the infringer can continue to sell the products during main proceedings. There will be damages to the owner of the rights consisting for example of lost profits. (Suggested text: If the claim for infringement is substantiated and the legal interest of the owner of the rights will be harmed if the infringer is allowed to continue selling the products during main proceedings, there will be damages to the owner of the rights consisting of, for example, loss of profits) The main task is therefore to indicate the right and substantiate the violation.

Legal changes introduced the obligation to take into account whether there is a probability of invalidation of the right in other pending proceedings[3]. For this reason, a new formal condition has been introduced. Owners of the right must inform if there are any invalidation proceedings pending or that they have no knowledge about it[4].

Such information will certainly influence the assessment of the claim. If the right was questioned, but the application for invalidation was rejected, this may improve the position of the owner. However, doubts arise in situations where the invalidation proceedings are ongoing. Can the judge himself assess the probable outcome, or should the judge wait for a decision and suspend the preliminary injunctions proceeding? The need to conduct the proceedings quickly favours the adoption of the first option.

Third change – deadline for filling for preliminary injunctions

As a rule the court may grant security before or during the main proceedings[5]. However the motion will be dismissed if it was filed 6 months after the owner became aware of the violation[6]. Before the change there was no such time limit expressly indicated in the regulations, but the principle applied in the jurisprudence of some IP courts.

Preliminary injunctions proceedings should only be granted in urgent matters. Therefore if the owner of the right waited too long to submit the claim, it shows that the matter was not urgent for him/her at all. The IP courts found that such a period is half a year.

However, it may be problematic to determine the moment when this deadline starts to run. Most often, the owners will not admit when they learned about the violation. If the cease and desist letter has been sent, it is reasonable to assume the starting date as the date of this letter. Screenshots showing the violation are also often presented in the case. It is worth looking at the dates in which they were made.

Changes applies to all cases that are pending

All three changes came into force on July 1st, 2023, including cases that were pending at that time. The changes regarding the assessment of infringement and deadline for filing preliminary injunctions is generally assessed positively by Polish professional representatives. The change regarding to the obligation to hear the possible infringer raises some reservations. This change is contrary to the principle of the speed of proceedings. However, its purpose is to prevent the abuse of the institution of preliminary injunctions.

[1] Art. 755 § 22  The Polish Code of Civil Procedure of 17 November 1964 (consolidated text: Journal of Laws of 2023 item 1550, as amended), hereinafter referred to as the “CCP”.

[2] Art. 7301 § 1 CCP

[3] Art. 7301 § 11 CCP

[4] Art. 736 § 5 CCP

[5] Art. 730 § 2 CCP

[6] Art. 755 § 23 CCP