Trade Mark Litigation

PATPOL Tomasz Mielke and Jaromir Piwowar

1. Sources of Law

1.1 What are the principal sources of law and regulation relating to trade marks and trade mark litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties).

The main legal act on trade mark protection in Poland is the Law on Industrial Property of 30 June 2000, which also contains provisions on patents, utility models, industrial designs and topography of integrated circuits, effective as from 22 August 2001 with further amendments.
As far as international treaties relating to trade marks are concerned, Poland accepted the legal system under several international treaties which have the same legal effect as the regulations directly established by Parliament. These treaties are: Paris Convention (International Union) 1883–1967; Madrid Agreement concerning the International Registration of Marks (Madrid Union) 1891–1967; Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks (Nice Union) 1957–1977 (with effect from 4 March 1997); Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks 1973 (with the reservation provided for in article 4(5); bound with effect from 4 March 1997); Protocol Relating to the Madrid Agreement concerning the International Registration of Marks (Madrid Union) 1989, with a declaration under article 5(2)(b) (with effect from 4 March 1997).
The main sources of binding laws on the Republic of Poland are the Constitution, statutes of Polish Parliament, ratified international treaties and Regulations (Ordinance) issued, for example, by the Prime Minister or the Council of Ministers (Polish government). Regulations shall be issued for the purpose of implementation of statutes.
Since 1 May 2004 (accession to the EU) Poland has been bound by all aquis communitaire including the Council Regulation 40/94 concerning Community Trade Marks (CTMR). The said regulation is a part of the Polish Legal system and is used by Polish Courts, especially by the Court for the Community Trade Marks and Community Designs which is located in Warsaw.

1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?

In principle, international treaties are ratified by the President of Poland as a representative of the state in foreign affairs. However, ratification of international treaties relating to certain state affairs (concerning peace, alliances, political or military treaties, freedoms, rights or obligations of citizens, the Republic of Poland’s membership of an international organisation) require prior consent granted under statute of the Polish Parliament.
After publication of a ratified international treaty in the Journal of Laws of the Republic of Poland (Dziennik Ustaw), it constitutes a part of the domestic legal order and shall be applied directly, unless its application depends on the enactment of a statute.
It should also be noted that an international treaty ratified upon prior consent granted by statute shall have precedence over statutes if such treaty cannot be reconciled with the provisions of such statutes.

2. Court and Administrative System

2.1 Can third parties oppose/request cancellation of a national or supranational (eg Benelux, Madrid Agreement and Protocol, Community Trade Marks) trade mark application/registration in your country? If so, on what grounds? Please briefly describe the opposition/cancellation procedure(s).

Pursuant to the Law on Industrial Property of 30 June 2000, it is possible to oppose and request cancellation with respect to the national (registered by the Polish Patent Office) and international trade marks. The basis for opposition/cancellation are absolute grounds for refusal (ie lack of the distinctive character) and relative grounds for refusal (ie prior rights of third parties, such as earlier trade marks, copyrights, company names etc). Community Trade Marks can be opposed/invalidated based on the provisions of Council Regulation 40/94.
The abovementioned grounds for refusal may be used during three stages of the proceedings before the Polish Patent Office. The requesting party may file ‘observations’, opposition or the request for the cancellation of a given trade mark. Any interested third party (natural or legal person) is authorised to file the so-called ‘observations’ as to potential obstacles against registration of the mark within six months of the date of publication in the Patent Office Bulletin of information about filing an application for registration of the mark. The observations may be based on the same grounds on which the registration could be nullified (absolute and relative grounds for refusal). The said term is informal, because the Polish Patent Office may still take into consideration the observations although they are filed after the abovementioned period. It should be noted that the party filing observations does not have to prove its legal interest.
If the mark is registered in spite of filing observations, the requesting party may initiate the opposition proceedings. In the light of article 246 of the Law on Industrial Property, any interested party (natural or legal) is authorised to file the opposition within six months from publication in the Patent Office Journal of information about trade mark registration. The opposition may be based on the same grounds on which the registration may be nullified (absolute and relative grounds for refusal). The Patent Office will notify the trade mark owner of the opposition and invite him to file a reply to the opposition within a fixed time limit. If the trade mark owner claims that the opposition is not justified, the case will be submitted for examination in litigation proceedings before the Polish Patent Office. If the trade mark owner does not timely file a response, or recognises the opposition as justified, the decision on registration of the given trade mark will be reversed and the proceedings discontinued.
If the opposition is not filed in due time, there is one more way to proceed against the mark. According to article 164 of the Law on Industrial Property, any interested party may file with the Polish Patent Office a request for cancellation on the grounds that the statutory requirements for registration have not been fulfilled.
Furthermore, the General Public Prosecutor or the President of the Patent Office may request cancellation of a given trade mark in the public interest. The General Public Prosecutor and the President of the Patent Office may also intervene in cancellation proceedings which are already pending.
Cancellation requests are examined in litigation proceedings by the Litigation Department of the Patent Office. It should be noted that partial cancellation of a trade mark (that is, concerning part of the goods and services) is possible.
The decisions of the Patent Office in cancellation proceedings are subject to a complaint to be filed with the Administrative Court within 30 days of receiving the decision in writing together with reasons. Subsequently, if a party is not satisfied with a decision of the Administrative Court, it can file an cassation with the Supreme Administrative Court.

2.2 In which courts are trade marks enforced? Are they specialised trade marks courts? If not, what level of expertise can a trade mark holder expect from the courts?

Infringement actions are to be brought before a competent District Court. Bearing in mind the fact that the majority of trade mark disputes are between the companies or persons running business activity, trade mark disputes are examined by Economic Divisions of District Courts. There are no specific courts which have exclusive jurisdiction for resolving trade mark disputes (except the Court for Community Trade Marks and Community Designs which is strictly focused on the legal issues related to CTMs). The expertise of judges on legal aspects relating to trade marks is still improving. Since EU enlargement, judges have attended seminars and conferences which are organised by governmental and non-governmental bodies.

2.3 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?

As a rule, the courts are not bound by decisions of national courts of other instances. Poland is not a common law country, like the US or UK, however Polish judges widely recognise the decisions and verdicts of the Polish Courts of Appeal and Polish Supreme Court which were issued in similar cases. The decisions of foreign bodies (courts and offices) may be recognised only as so-called persuasive precedents during evidentiary proceedings.

2.4 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or national or supranational government agency shall they be brought (eg the national Trade Mark Office or the OHIM in Alicante)?

Invalidation actions are often used by defendants as a kind of defence in infringement proceedings. However, the Court does not have the authority to examine requests for trade mark invalidation. If an invalidation request is filed by the defendant, it is examined by the Patent Office in litigation.

2.5 Who can represent parties before the courts handling trade mark litigation and/or the national or supranational government agency dealing with trade mark validity issues?

The parties to both types of proceedings (invalidation and infringement) may be represented by patent and trade mark attorneys, attorneys at law and legal counsel.

2.6 What is the language of the proceedings? Is there a choice of language?

The language for both kinds of proceedings (invalidation and infringement) is always Polish and it is not possible to conduct the proceedings in any other language.

3. Substantive Law

3.1 To what extent are unregistered trade marks protected under your country’s laws?

Unregistered trade marks are protected under the provisions of the Act on Combating Unfair Competition. The scope of protection is similar to the scope under the Law on Industrial Property. However, if the unregistered trade mark becomes a well-known trade mark (or well known with a good reputation), the scope of the protection of this trade mark is provided by the Law on Industrial Property.
Pursuant to article 301 of the Law on Industrial Property, the holder of a well-known trade mark on the territory of the Republic of Poland may demand the cessation of the use of the identical or similar trade mark in respect of identical or similar goods, if such use is likely to mislead the public as to the origin of the product.
It should be also noted that according to article 296 of the Law on Industrial Property infringement of the right of protection for a trade mark consists of unlawful use in the course of trade of a trade mark identical or similar to a well-known trade mark with a good reputation registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or repute of the earlier trade mark.

3.2 How is trade mark infringement assessed? Does protection extend to translations or to conceptually identical but graphically different trade marks?

The methods of assessing infringement are the same under both laws (the Law on Industrial Property and the Act on Combating Unfair Competition). However, a trade mark holder enforcing his rights to an unregistered mark is obliged to prove before the court prior use of that mark on the Polish market. On the other hand, if the unregistered mark is well known, the scope of its protection is determined by the Law on Industrial Property.
When assessing trade mark infringement, courts examine the risk of misleading ordinary customers, who may be confused as to the origin of goods or services under similar marks. Polish Courts, when assessing whether or not trade mark infringement has taken place, follow the criteria confirmed by the Polish Supreme Court, which are the same as those set forth by the European Court of Justice. The following cases may be mentioned as examples:

• C-342/97, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV – the risk of misleading customers with respect to the relationship between the companies;
• C-39/97, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc – the rules for assessment of the goods and services;
• C-210/96, Gut Springenheide – the model of a typical customer; and
• C-251/95, SABEL BV/Puma AG, Rudolf Dassler Sport – the important role of comparing trade marks ‘as a whole’.

3.3 Are there other causes of action for trade marks (eg dilution)?

The Law on Industrial Property provides also the possibility to file a request for lapse of a trade mark if the mark has lost its distinctive character. In the light of article 169 of the Law on Industrial Property, protection of a trade mark shall also lapse because of the loss of distinctive features by the trade mark in consequence of the owner’s action or negligence, or becoming a customary mark consisting exclusively of elements which may serve, in the course of trade, to indicate the kind, quality, quantity, price, intended purpose of the goods, the process, time or place of its manufacturing, the composition, function or usability of the goods, in respect of the goods for which the trade mark has been registered. The said request is also examined by the Polish Patent Office in litigation proceedings. In both types of proceedings (based on non-use or dilution) the requesting party should indicate its legal interest in order to file the request.

3.4 Can a trade mark be enforced against a domain name, a trade name, a pseudonym or other distinctive signs?

In general, a trade mark can be enforced against a domain name, a trade name ie with respect to the cases related to the conflicts between trade mark owners and the domain name owners which are examined by the Arbitrary Courts or Common Courts.
However, according to the provisions of article 158 of the Law on Industrial Property, the holder of a trade mark registration shall not be entitled to prohibit a third party from using the name under which he runs his business activity, provided that said name is not used for marking the goods being the subject of that activity and no risk of misleading the public as to the origin of the goods exists, in particular owing to a different range of activities or the use of the name being limited to a particular locality. Nevertheless, these provisions shall not apply where a third party, when using the name under which it runs its business activity, acts in bad faith.

3.5 On what grounds can a trade mark be invalidated?

The Law on Industrial Property divides the grounds for the invalidation of trade marks into two categories – the absolute and relative grounds for invalidation, which are also the grounds for refusal. In other words, the provisions relating to refusal are strictly applicable during invalidation proceedings.
As far as the absolute grounds for invalidation (refusal) are concerned the first ground which should be mentioned is lack of the distinctive character of the trade mark. Furthermore article 129 of the Law on Industrial Property provides that rights of protection shall not be granted for signs which:

• cannot constitute a trade mark; or
• are devoid of sufficient distinctive character (signs which are not capable of distinguishing, in trade, the goods for which they have been applied; signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods; signs which have become customary in the current language and are used in fair and established business practices).

Pursuant to article 131, rights of protection shall also not be granted for signs:

• whose use infringes third parties’ personal or economic rights; or
• that are contrary to law, public order or morality; or
• which, by their nature, may mislead the public, in particular as to the nature, properties of the goods and to their geographical origin.

As far as the relative grounds for invalidation (refusal) are concerned, article 132 of the Law on Industrial Property states that protection shall not be granted to a trade mark in respect of identical or similar goods, if the trade mark is identical or similar to:

• registered geographical indication, unless the applicant is entitled to use that indication and the grant of protection to the trade mark is not supposed to excessively restrain other entitled parties from using the registered geographical indication;
• a trade mark which, before the date according to which priority to obtain protection is determined, has been well known and used as a trade mark in respect of the goods of another party;
• a trade mark earlier registered in the Republic of Poland, whose registration has terminated, provided that an interval between the date of lapse of protection for the trade mark and the date on which a similar trade mark has been applied for by another party is, subject to article 133, no longer than two years.

Pursuant to the said article protection of a trade mark shall not be granted (or should be invalidated), if the trade mark:

• is identical to a trade mark registered or applied for with an earlier priority date (provided that the latter is subsequently registered) on behalf of another party for identical goods;
• is identical or similar to a trade mark for which protection was granted or which has been applied for with an earlier priority date (provided that the latter is subsequently granted protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark; or
• is identical or similar to a trade mark of renown registered or applied for with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trade mark. The above provision shall apply to well-known trade marks accordingly.

3.6 Must use requirements be satisfied to maintain the trade mark registration? If so, is there any definition of what constitutes use?

Maintaining the trade mark requires use. Trade mark lapse may be declared if the mark was not used in a genuine way within five consecutive years following registration unless there exist justified reasons for non-use.
The Law on Industrial Property provides that use of a trade mark shall, in particular, consist of:

• using a form varying in elements which do not alter the distinctive character of the mark;
• using a form for which protection has been granted by affixing the trade mark to protected goods or to their packaging, offering and putting the goods onto the market, importing or exporting them, or their storing for the purpose of offering and putting on the market, offering or providing services under the trade mark;
• using the trade mark on business documents used to put the goods onto the market or in rendering services;
• using the trade mark in advertising;
• use of the trade mark by a third party with the right holder’s consent;
• use of the trade mark by a party authorised to use the collective trade mark or the collective guarantee trade mark.

The use of a trade mark in advertising a product which is neither available on the market nor is manufactured in the country for export purposes, shall not be deemed to constitute genuine use. According to the abovementioned law, where a proceeding for declaring the lapse of protection is initiated, the burden of proof that the trade mark has been used or that serious reasons for non-use of the trade mark exist shall be on the holder of the right of protection.
The obligation to use the trade mark affects both infringement and invalidation actions (both court actions and actions before the Patent Office). The protection of a trade mark may not be invalidated on the sole ground that the trade mark is similar to an earlier trade mark, where the latter has not been used within the meaning of the above provisions.

3.7 What other defences, if any, are available to an alleged infringer? Does your country’s law provide for prior user rights?

The Law on Industrial Property also provides for existence of the so-called ‘prior user’ institution. Article 160 provides that any person who, when running a small, local business activity has used in good faith the mark subsequently registered as a trade mark on behalf of another party, shall have the right to continue to use that mark free of payment to the same extent to which he had previously used it. Upon request of an interested party the abovementioned ‘prior user’ right shall be recorded in the trade mark register. The right may be assigned to another party only together with the enterprise.

3.8 To what extent can enforcement of a trade mark expose the trade mark holder to liability for an antitrust violation?

Not applicable.

3.9 Can a court only partially invalidate a trade mark?

It should be noted that partial cancellation of a trade mark (that is, concerning part of the goods and services) is possible. However, the Court does not have the authority to examine requests for trade mark invalidation. If an invalidation request is filed by the defendant, it is examined by the Patent Office in litigation.

3.10 Is it possible to amend a registered trade mark during a lawsuit?

According to the Law on Industrial Property, after registration of the trade mark it is only possible for a trade mark holder to reduce the list of the goods and services.

3.11 Are there any grounds on which an otherwise valid trade mark can be deemed unenforceable, owing to misconduct by the trade mark holder, or for some other reason (eg expiry of time limit)?

The period of prescription for claims for infringement of a trade mark shall be three years. The period concerned shall run separately in respect of each individual infringement, from the date when the right holder learned about the infringement of his trade mark and about the infringing person. However, in any case, the claim shall become barred by prescription after five years from the date on which the infringement occurred.

3.12 Can a trade mark holder bring a lawsuit claiming both trade mark infringement and unfair competition for the same set of facts? Is it possible to bring parallel unfair competition proceedings, whether or not the trade mark is registered?

The lawsuit may also be based on the Unfair Competition Act and the Law on Industrial Property for the same set of facts.

4. Parties to Litigation

4.1 Who can sue for trade mark infringement (trade mark holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?

Only a trade mark holder is authorised to file a lawsuit against infringers. Legal actions based on trade mark registration may be also instituted by an exclusive licensee if the licence agreement is recorded in the Register of the Polish Patent Office. The distributor may start legal actions against a trade mark infringer only on the basis of specific provisions of the Unfair Competition Act.

4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment on non-infringement?

The lawsuit to obtain a declaratory judgment on non-infringement may be filed if the plaintiff/possible defendant in a Court trade mark dispute indicates that he has legal interest in obtaining the abovementioned declaratory judgment (ie a party who received a cease and desist letter).

4.3 Who can be sued for trade mark infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to trade mark infringement by someone else?

Mostly, the defendants in trade mark disputes are entrepreneurs (companies or natural persons running business activity). But there are no legal obstacles to suing natural persons for trade mark infringement. If suing a company, the defendant in the civil proceedings is the company itself, not the directors. The company directors are not personally responsible for trade mark infringement.

4.4 Is it possible to add or subtract parties during litigation?

According to recent changes to the Polish Civil Proceedings Code, it is not possible to add any new parties to pending civil proceedings. The main reason for the said amendment is a general rule making civil proceedings as quick and effective as possible.
However, it is possible to subtract the defendant during pending civil proceedings if the lawsuit was filed against the wrong defendant. The request can be filed upon the motion of the plaintiff or wrong defendant with the trial court.

5. Enforcement Options

5.1 What options are open to a trade mark holder when seeking to enforce its rights in your country?

Trade mark holders in Poland may protect their rights in civil and criminal proceedings. Moreover, in order to protect their rights more effectively, trade mark holders may revert to procedures before customs authorities.

5.2 Are criminal proceedings available? If so, what are the sanctions?

In Poland it is considered a criminal act to put a counterfeit trade mark on goods with the intention of introducing them onto the market, or introduce goods bearing counterfeit trade marks onto the market. The IP Law defines a ‘counterfeit trade mark’ as any trade mark identical to, or indistinguishable in the course of regular trade from a registered trade mark, which is unlawfully used in respect of the protected goods.
Any person committing either of these two criminal acts will be subject to a fine, a period of liberty restriction, or up to two years’ imprisonment. However, the conviction of a perpetrator committing the abovementioned criminal acts will only be possible in cases where it is proved by police and the Public Prosecutor that the criminal act was committed intentionally.
Trade mark owners must be aware of the fact that, in most cases, they must file a motion for prosecution if they wish to enforce their rights through the criminal justice system. Only after this motion is filed can the proceedings be started and continued ex officio. The only exception is when the person committing the crime obtains substantial profits from his criminal activity, or introduces a significant amount of counterfeit goods bearing the trade mark onto the market. In such cases, the perpetrator is subject to a more serious penalty (namely, imprisonment from six months up to five years) and the proceedings may be initiated ex officio (it is not necessary to file the motion for prosecution).

5.3 Are border measures available?

Poland, as an EU member is bound by Council Regulation (WE) 1383 dated 22 July 2003 which came into effect on 1 July 2004, determining the actions of customs authorities against the goods deemed to be infringing IP rights, as well as measures to be taken by customs authorities in respect of such goods. In addition, the territory of Poland as a member state of the EU is subject to an additional regulation, namely Council Regulation (WE) 1891/2004 dated 21 October 2004, which came into effect with retroactive date on 1 July 2004 and sets executive regulations to the aforesaid Council Regulation (WE) 1383/2003.
Under the above Regulation a trade mark owner can file with the Main Customs Chamber in Warsaw a request to grant customs protection resulting in prohibition of entry into Poland and export from Poland of the infringing goods. The regulation also concerns trade marks, patent, copyrights, registered design and unregistered design. The actions before customs authorities can be split into two types depending on the type of applied procedure, ie, whether it is national or community.
The abovementioned request has to be made on a special form which is the enclosure to the Council Regulation 1891/2004. The following must be filed along with the request:

• documents confirming the IP rights (ie a copy of the decision on registration or its publication in the Patent Office’s Official Journal);
• visual representations of the original goods (ie digital photos);
• a written obligation to cover the costs related to the seizure if the case is lost in court (criminal and civil) or if the goods are proved to be genuine; and
• the name of the person or company able to assist the customs authorities to determine whether or not the goods are counterfeit.

Customs protection for trade marks is granted for one year, with a possibility of renewal. If, upon filing the relevant request, the Main Customs Chamber in Warsaw gives protection to a trade mark, the customs authorities in all the outposts in different parts of Poland are granted the right to seize and stop any suspect goods which may be counterfeit or pirated, for ten working days (which can be extended by ten more days, if justified properly). This will be done automatically without having to file any additional requests with the Main Customs Chamber. Granting the customs protection entitles the right holder to officially contact the customs office, in which the goods have been seized (it is vital to distinguish between the Main Customs Chamber in Warsaw, which is the main administrative body, and a number of local customs offices in the territory of Poland), and ask for detailed information (full name of the person or firm, its address, commercial register number, data concerning the recipient of the goods, the amount seized, the samples of the goods etc) about the entity or person by whom the goods were declared for customs clearance.
Where a seizure is made, the right holder is obliged to provide the customs authorities with a decision on instituting the investigation, a decision on the subject of material evidence (criminal proceedings), or a decision on securing claims – preliminary injunction (civil proceedings) within ten working days from the date of the customs seizure. It should be noted that the first ten working days start to be counted from the date the right holder is notified in writing about the seizure. The said ten-day term may be extended by another ten days upon providing the customs authorities with evidence that a motion for prosecution, or the request for securing of claims was or should be filed. In principle then, the right holder should file the motion for prosecution or request for securing the claims (with the Civil Court) during the first ten working days from the seizure.
According to the provisions of Council Regulation 1383/03, Polish customs authorities also have the possibility to seize the goods even if the customs protection is not granted (seizures ex officio). Such seizure is made only for three working days in order to enable the IP rights owner to file the abovementioned request for granting the customs protection. Otherwise, the goods are released by the customs office.
Through the agency of the Main Customs Chamber in Warsaw, the owners of Community Trade Marks may also apply for customs protection throughout the EU. In such cases, the request, which is filed with the Main Customs Chamber in Warsaw on a special form (attached to the Council Regulation 1891/2004), in addition to identical documents for national protection, must be supplied with documents containing information about persons or institutions (agencies) in the respective EU member states who are able to help customs authorities distinguish between the original goods and the counterfeit ones. The request, following a decision by the Main Customs Chamber, is circulated to all customs authorities in all EU member states.

5.4 To what extent are courts willing to grant cross-border or extra-territorial injunctions

There is no court practice that would allow clarification of whether Polish Courts are willing to grant cross-border injunctions.

5.5 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?

The Polish courts are not bound to and do not like to consider decisions made by foreign courts or other authorities. Accordingly it is unlikely that reference to a foreign torpedo action would be of binding precedence or even guidance, or would be widely recognised by the Polish courts.

5.6 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve trade mark disputes? How widespread are ADR methods and in which sectors? If arbitration is available to assess invalidity, will your Trade Mark Office recognise and execute an arbitral award declaring a trade mark invalid?

Alternative Dispute Resolution is not common in relation to trade marks in Poland. The exception is cases relating to the conflicts between trade mark owners and domain names owners which can be and are examined by the Arbitrary Courts and may be the subject of mediation offered by the said courts. It should also be noted that there is a possibility of examining the cases relating to civil infringement of trade marks by Arbitrary Court if the plaintiff and defendant sign the Arbitrary Clause, which is the consent of the parties to have the case examined by Arbitrary Court. Arbitration is not available to assess invalidity of a trade mark.

6. Procedure in Civil Courts

6.1 What is the format of trade mark infringement proceedings?

Cases relating to trade mark infringement are handled by common courts in the civil proceedings. There are no separate courts for examination of IP rights (including infringement cases, irrespective of whether the infringement concerns IP rights in general, or it was committed in respect of specific IP rights, eg the rights to a trade mark).
If a case concerns a dispute between two companies (as it frequently is) arising on the grounds of their business activity, it will be examined by a commercial court under special procedure (civil commercial proceedings). The above distinction regarding the kind of procedure has an essential impact on the parties. Namely, the requirements regarding the proceedings before commercial courts are stricter than if a common court deals with the case. In particular, there are some restrictions regarding the filing of evidence (the principle of the so-called ‘evidence preclusion’). Pursuant to this principle, it is necessary for the plaintiff to mention in the statement of claim all the statements relevant to the case and attach all evidence to support those statements, under the penalty of being precluded from serving the court with more evidentiary materials after the proceedings have been started. Another requirement typical of the proceedings before a commercial court is the obligation to serve the so-called ‘warning letter’ on the infringer before commencing court action. The aim of the warning letter is to inform the opposite party that it has committed an act of infringement, and to request that party to fulfill the harmed person’s claims voluntarily. The warning letter, along with the infringer’s response, must be attached to the statement of claim filed with the court.

6.2 Are disputed issues decided by a judge or a jury?

As mentioned above, IP rights infringement cases are dealt with by common courts, the disputed issues are decided by a judge, not by a jury. Cases before the Court of First Instance are examined by one judge, cases before the Court of Appeal are examined by three judges.

6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?

The main kinds of evidence are witnesses, documents, affidavits, opinion of court-appointed experts and opinions of private experts. The evidence depends on the parties to the proceedings, however, the main burden of proof rests with the plaintiff. Opinion polls are not necessary to assess the likelihood of confusion – assessment done by Polish courts is based on other kinds of evidence. However, opinion polls may be essential in litigation proceedings regarding potential dilution of the mark which are handled by the Polish Patent Office. The witnesses are examined first by the judge, then by the party which called the witness and then by the opposite party.

6.4 To what extent is survey evidence used (eg to support acquired distinctiveness, likelihood of confusion)? What is its relevance in proceedings (eg party allegation, evidence)? Who decides which consumers are questioned in the survey (eg the court, court expert)? What level of cost should one expect to incur to carry out a survey? Are these costs recoverable from the losing party?

As mentioned above in 6.3, evidence given depends on the parties to the proceedings. Parties who decide to present survey evidence to the court are fully responsible for the format of the given survey. The costs of such evidence are not recoverable from the losing party.

6.5 Is evidence obtained for criminal proceedings admissible in civil proceedings, and vice versa?

The evidence obtained in criminal proceedings may be admitted for use in civil proceedings and vice versa. It should also be noted that the civil court (District Court) is obliged to recognise the established set of facts which were the grounds for a verdict issued by the criminal court.

6.6 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?

As far as pre-trial discovery and mechanisms to obtain evidence from the opposite party or from third parties are concerned, Polish legislation provides many legal means. Namely, the court (according to article 249 of the Polish Code of Civil Proceedings) may (upon of the motion of the plaintiff) oblige the defendant, or third parties, to provide the court with the relevant evidence. In particular, the court may demand from the defendant, or other third parties, the documents which confirm the scope of the turnover of counterfeit products and other relevant information.
A significant problem with regard to the abovementioned mechanism is that the courts are not willing to use this part of the legislation.
Recent changes to the Law on Industrial Property deal with the abovementioned problem. Since 20 June 2007, trade mark owners have been able, in separate proceedings (apart from the main civil proceedings), to ask the court to impose on the defendant or a third party an obligation to deliver information in particular regarding the following:

• the origin of counterfeit goods;
• the distribution network of counterfeit goods;
• names and addresses of manufacturers and suppliers; and
• amount of the goods which were manufactured, sold and put in trade etc.

6.7 What level of proof is required for establishing infringement or invalidity?

The Code of Civil Proceedings and the Code of Administrative Proceedings which are applicable before the Polish Patent Office do not provide any guideline provisions concerning level or quality of proof.

6.8 How long do trade mark infringement proceedings typically last? Is it possible to expedite this process?

The main civil proceedings before the District Court (the Court of First Instance) last approximately one year; it usually takes eight months to conduct the proceedings before the Court of Appeal and it is not possible to expedite this process.

6.9 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?

Typical tactics of the defendant apply to suspension of the civil proceedings. According to the Code of Civil Proceedings, the District Court may suspend the civil proceedings if a decision is dependent on the decision of another administrative body (ie the decision of the Polish Patent Office on cancellation of a trade mark due non-use or due to the loss of distinctive character). A decision on suspension of civil proceedings is subject to a compliant to be filed with the Court of Appeal.

7. Final Remedies

7.1 What remedies are available against a trade mark infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?

A trade mark owner may demand cessation of infringement, surrender of unlawfully obtained profits, compensation for damages, and publication of the relevant statement in the press. At the plaintiff’s request, the Court may also decide on destruction of the unlawfully manufactured products bearing a counterfeit trade mark, together with the means used for their manufacture. The court’s decision is executed by the court’s bailiff.

7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?

According to article 285 of the Law on Industrial Property, the holder of a patent, a supplementary protection right, a right of protection or a right in registration, or a person so entitled, may demand stoppage of the infringing acts. The provision is applicable with regards to registered trade marks.

7.3 What monetary remedies are available against a trade mark infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?

As far as compensation for damages is concerned, obtaining reparatory damages from the infringer is possible independently of the surrender of unlawfully obtained profits. The conditions for obtaining reparatory damages are as follows: providing evidence confirming that infringement has taken place; evidencing damages sustained by the rights owner; evidencing direct impact of the infringer’s actions upon the harmed person; and proving the guilt of the infringer. In principle, the burden of proof rests with the rights owner.
Irrespective of the above, according to recent changes to the Law on Industrial Property, the plaintiff may also justify the level of compensation by indicating the amount of money which could be the equivalent of the unpaid licence royalties by the defendant. Punitive damages (which are provided by the Polish Copyright Act) are not available in the light of the provisions of the Law on Industrial Property.

8. Preliminary Relief

8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?

Trade mark owners may protect their rights in civil proceedings by obtaining a decision on preliminary injunction of the infringing goods and securing monetary and non-monetary claims.
Two requirements must be fulfilled in order to obtain a court decision on preliminary injunction. Namely, it is necessary to justify the claims and provide evidence of legal interest. In order to justify the claims, one has to produce evidence confirming the ownership of the infringed rights, and that infringement has indeed been committed in respect of the protected goods. As to legal interest, it shall exist where the lack of a preliminary injunction prevents, or seriously impedes, the execution of the court decision in the subject case, which has to be evidenced by the party requesting the preliminary injunction. The court that decides on the preliminary injunction has to take into consideration the interest of both sides, the IP rights owner and the defendant, to the extent that the infringed IP rights are sufficiently secured, but at the same time the other side is not burdened more than necessary.
The injunction cannot tend towards a complete fulfilment of the plaintiff’s claims. Nonetheless, in cases regarding IP rights infringement, court decisions in practice result in imposing upon the alleged infringer an order to cease the performed actions under the sanction of compulsory fulfilment.
Being granted the right to use a preliminary injunction to protect rights brings certain consequences. The court may burden the plaintiff with a monetary deposit to be used as a guarantee that the plaintiff will cover the potential future claims of the defendant relating to the damages sustained as a result of the preliminary injunction. In addition, if the owner of the rights has missed the deadline to file the statement of claim, has withdrawn the statement, or if the statement has been rejected by the court, the defendant has the right to claim the reparation of damages sustained as a result of the preliminary injunction.

8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?

In practice, the request is examined at a closed session of the court (such sessions take place in respect of non-monetary claims). The court issues preliminary injunction decisions without the attendance of the parties. The decision should be only delivered to the requesting party. The opposite party receives the decision together with the notice of the court bailiff. The manner of institution of the preliminary injunction proceedings entirely depends on the decision of the judge.

8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?

The decision on preliminary injunction may also be the ground for seizures and raids by the court bailiffs. In order to ask the court bailiff to seize the goods bearing the infringing trade mark, the trade mark owner has to ask the court for an enforcement clause in the preliminary injunction decision.

8.4 Can the defendant put the validity of a trade mark at issue in preliminary injunction proceedings?

The issue of trade mark validity may only be raised as part of arguments by the opposite party which should be listed in the compliant against the preliminary injunction decision. Please see 2.4.

8.5 What is the format of preliminary injunction proceedings?

The request for a preliminary injunction may be filed before filing the statement of claim, that is before starting the court proceedings, as well as once the proceedings have been started. If the request for a preliminary injunction is filed before starting the court proceedings, the court, upon issuing a decision on granting the preliminary injunction, designates a deadline, before which the statement of claim has to be filed on pain of nullity of the injunction. The deadline cannot exceed two weeks.

8.6 To what extent are documents, affidavits, witnesses, survey evidence, and/or (court-appointed or private) experts used in preliminary injunction proceedings?

The main kinds of evidence used in preliminary injunction proceedings are the same as in main civil proceedings, namely documents, affidavits, opinion of court-appointed experts, opinion of private experts. The evidence called fully depends on the requesting party.

8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?

Please see question 6.7.

8.8 How long do preliminary injunction proceedings typically last?

Under current regulations, the request for a preliminary injunction has to be examined immediately, not later than one week from the date of filing it with the court. However, in practice, the preliminary injunction typically lasts about two weeks. The court decision on preliminary injunctions may be obtained (in practice) within 10-14 days.

8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?

The request for a preliminary injunction may be filed before filing the statement of claim, ie, before starting the court proceedings, as well as once the proceedings have been started. If the request for a preliminary injunction is filed before starting the court proceedings, the court, upon issuing a decision on granting the preliminary injunction, designates a deadline, before which the statement of claim has to be filed on pain of nullity of the injunction. The deadline cannot exceed two weeks.

9. Appeal Procedure

9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?

As far as the main civil proceedings are concerned, a defeated party is authorised to file an appeal against the decision of the court of first instance. The appeal may be based on the following: breach of substantive or procedural law; a mistake committed by the court during establishing facts which subsequently had an impact on the decision; and the claim for declaring invalidity of the subject proceedings.
The appeal should be filed by a defeated party within 14 days from the date of receiving the decision along with the reasons in writing. The request for written reasons should be filed within seven days following the announcement of the decision. The parties to the appeal proceedings may file a cassation pleading against the decision of the Court of Appeal if the case meets the requirements for being brought before the Supreme Court (serious breach of substantive and procedural law; the case concerns an important legal issue etc)
A defeated party in preliminary proceedings can file a compliant with the Court of Appeal against the decision on preliminary injunction within seven days from the date of receiving the decision on preliminary injunction.

9.2 How long do appeal proceedings typically last?

The main civil proceedings before the District Court (the Court of First Instance) last approximately one year; it usually takes eight months to conduct the proceedings before the Court of Appeal.

10. Litigation Costs

10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?

As far as the costs of the proceedings are concerned, the plaintiff is obliged to pay an official court fee for filing the statement of claim. The fee is not fixed and may vary depending on a judge’s decision (€200-€1,200) and the character of the claims. There is a pending dispute over the doctrine of the intellectual property law concerning the character of claims, which are classified as monetary or non-monetary.

10.2 Are costs recoverable from the losing party?

The costs of the proceedings are in most cases recoverable from the losing party but as far as the attorney’s fees are concerned the court establishes them based only on the Regulation of the Ministry of Justice about minimal attorney’s fees.

11. Forthcoming legislation

11.1 What are the important developing and emerging trends in your country’s trade mark law? To the extent it relates to trade mark enforcement, please outline any major trade mark legislation in the pipeline.

The new set of amendments to the Law on Industrial Property will come into effect in October 2007 (except for the changes in criminal provisions of the Law which should come into effect in August 2007).
The above change will result in the so-called ‘evidence preclusion’ principle, which will be applicable in litigation proceedings (also with regard to trade marks) before the Polish Patent Office. The reason for implementing the proposed ‘evidence preclusion’ is to facilite and shorten litigation proceedings before the Patent Office.
As soon as the principle of ‘evidence preclusion’ becomes effective, the Polish Patent Office will have the right to issue an order designating a final term for the parties to serve any additional evidence.
In practice, the party will face serious legal consequences as any late evidence materials will be rejected by the Patent Office or the Court, unless it is proved that there existed justified reasons for failing to deliver the said evidence in due time along with filing the request. The implementation of the above changes should put an obligation upon trade mark holders to collect all the relevant evidentiary materials before starting litigation proceedings before the Polish Patent Office.
As mentioned above, the new set of amendments also concerns changes to the criminal provisions of the Law on Industrial Property. They should have significant impact upon Polish criminal case law and the enforcement of exclusive rights deriving from trade mark registrations under criminal law. It should be noted that the changes concern the definition of ‘introducing goods’ bearing counterfeit trade marks onto the market – expressed in article 305 of the Law on Industrial Property. The abovementioned phrase will be changed from ‘introducing goods’ to ‘making the turnover’ which should – according to the authors of the subject changes – allow the relevant authorities (namely the Public Prosecutor, Police, Customs Chamber and Customs Offices) to take more efficient action related to combating crime connected with counterfeiting original goods and infringement of registered trade marks.

12. Useful references

12.1 Please identify any useful works of reference relating to trade mark law and trade mark litigation in your country, including useful websites.

As regards the works relating to trade mark law and trade mark litigation in Poland, what can be mentioned are the works published by the Polish Chamber of Patent Attorneys and the Institute of Intellectual Property Law at the Jagiellonian University in Kraków.
The following useful websites relating to trade mark law and trade mark litigation in Poland should be mentioned:

• the official website of the Polish Patent Office (www.uprp.pl);
• the official website of the Polish Chamber of Patent Attorneys (www.rzecznikpatentowy.org.pl); and
• internet portal related to the Law on Industrial Property called VWP (www.vwp.pl).