A game changer for Poland preliminary injunctions
In IP disputes, proceedings for injunctive relief are extremely important. Obtaining injunctive relief frequently allows the holder of an IP right to prevent the introduction of a new, competing product or a takeover of clientele or market position by an infringer. Many product launches in Central and Eastern Europe begin in Poland, the EU's fifth-largest economy with approximately 40 million consumers.
As a result, it is important to pay close attention to Polish judiciary reforms in IP matters. Of course, the initial stage of this reform was the introduction of specialised IP courts (five district courts and two appellate courts) that only deal with IP and unfair competition claims.
Poland's IP courts may issue an injunction before or during the proceedings. When granting injunction relief, IP courts in Poland can decide either to prohibit a potential infringer from acting in a certain way or to "freeze" a specific amount if the potential infringer loses the main dispute.
A simple prohibition of the use of, for example, a trademark or a patent could lead to a rethinking of the other party's business plans when the business model in question will be obsolete after some time regardless of the settlement. In the past, there was no special regulation on granting preliminary injunction proceedings in IP rights infringement cases.
On March 22, 2023, the President of the Republic of Poland signed an amendment to the Code of Civil Procedure, which was published in the Journal of Laws of the Republic of Poland on March 31, 2023, and makes structural changes to the granting of interim protection in IP cases.
The new rules for granting the injunction relief take effect on July 1, 2023, and apply to all preliminary injunction motions filed after that date as well as cases initiated but not concluded before that date.
Even if the court has not granted injunction relief before July 1, 2023, it will apply the new rules. The new rules apply to all entrepreneurs who own IP rights that are valid and effective in the territory of Poland (including EU trademarks and Community industrial designs).
Before the amendments, the IP Court, when deciding on granting the preliminary injunction, was bound to assess (i) the legal interest in granting the injunction relief and (ii) the probability of the asserted claims.
Now, the rules of the game have changed. Aside from the standard procedure of verifying the probability of the asserted claims, the IP Court will have to consider the probability of invalidation of an IP right (the basis for the injunction relief motion) in other pending proceedings when deciding on injunction relief.
Simultaneously, the IP right holder seeking injunction relief must inform the IP Court of any pending proceedings concerning the invalidation of the right or lack thereof. The most important changes concern: (i) assessing validity, (ii) time limits, (iii) involvement of the infringer in the preliminary proceedings.
Validity of an IP right will be now assessed
It has been an established rule that to get a preliminary injunction, the IP right holder must first prove a claim. Substantiating a claim is what the IP rights holder normally does in their primary pledge to prove infringement, whereas the substantiation of the claim should include both factual circumstances and the relevant legal basis.
Now, specialised IP courts, when assessing whether granting interim protection against IP infringements is justified in a given case, will take into account the likelihood of invalidation of the IP right (in the main proceedings or in administrative proceedings before the Polish Patent Office) based on information coming from the parties or known to the court ex officio.
An IP right holder seeking injunctive relief will have to inform the court of current or past invalidity cases for the IP right it wishes to temporarily protect, and the court will be able to refuse injunctive relief in such a case.
Assessing the validity of IP rights in preliminary procedures can be difficult for a variety of reasons. First, the preliminary processes framework precludes the IP court from making findings based on court-approved expert evidence.
The holder of an IP right may seek the advice of a private expert to prove a claim and determine the validity of the IP right. Nonetheless, because the judges are appointed by the interested party, their reaction to the private experts' recommendations may differ.
Second, because there are no so-called technical judges sitting in IP courts, the criterion (threshold) for the entitlement to invalidate an exclusive right in injunctive relief proceedings will be uncertain.
Third, approaching new rules may create an occasion for the Polish court to refer a case to the Court of Justice of the European Union (CJEU) in the future for a preliminary ruling on the conformity of a national law provision with Article 9(1) of Directive 2004/48.
The CJEU ruled on April 28, 2022, that Article 9(1) of Directive 2004/48/EC must be interpreted as precluding national case law stating that motions for preliminary remedies for patent infringement must be dismissed in principle if the validity of the patent in question has not been confirmed at least by a ruling at first instance in opposition or invalidity proceedings.
Perhaps it would be best to leave it to the court's discretion here, keeping in mind the standards of Article 3 of Enforcement Directive 2004/48: promptness, effectiveness, and proportionality.
Urgency is now official
In the past, the law has not expressly indicated the time factor that would require the right holder to take action, eg, without undue delay or, even less, within a specified period of time. In some recent court decisions, however, it has been suggested that the time within which right holders should apply for a preliminary injunction in IP cases should have been no longer than six to eight months.
Now, when assessing an injunction application, the IP court will consider when the applicant (the IP right holder or licensee) became aware of the IP infringement. It will not be possible to obtain a preliminary injunction for a claim of infringement of IP rights six months after the rights holder becomes aware of the alleged infringement of the IP right in question.
After the six-month time limit has expired, the IP right holder could request the court reinstate it; however, the IP right holder must demonstrate in the request for reinstatement that the failure to comply with the time limit was due to no fault of the right holder who wishes to file a motion for injunction relief.
Since the six-month period is limited to matters involving “exclusive rights”. The urgency will not be relevant for filing an injunction motion based on the provisions of the local laws on combating unfair competition.
Inter partes is by default
While new criteria for granting injunctive relief apply to all IP rights (copyright, trademark rights, design rights, and patents), they are expected to be most relevant to businesses involving product launches, particularly the life sciences industry. A patent holder seeking injunctive relief must notify the court of any pending invalidity litigation, and the court may deny injunctive relief in such a situation.
In examining the preliminary injunction motion, the criterion of time and probability of invalidation of an exclusive right recommends that IP owners in Poland should alter their approach to defending IP rights in Poland in the near future. This rationale is consistent with the IP Court in Warsaw's past approach, which has been cautious in awarding preliminary injunctions, noting the huge impact on the financial standing of the infringing parties.
Agnieszka Sztoldman is counsel at Osborne Clarke Poland and adjunct professor at the University of Wrocław. She can be contacted at agnieszka.Sztoldman@osborneclarke.com
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