The changes in the judicial system concerning intellectual property matters have been widely discussed for long. A draft of the relevant act, which initially seemed to be the issue of the remote future, will be coming into effect fairly soon. The act is a response to many postulated proposals of introduction into the Polish judicial system of specialized courts to handle intellectual property matters. The number of disputes over intellectual property is continuously growing, and they cover a broad range of issues to be resolved. Therefore, on 13th February 2020, the Polish Parliament passed the Act on Amendment of the Civil Procedure Code, including an amendment to a number of other Laws. The Act will come into effect on 1st July 2020.
The intention of the draft Act was to create separate organizational units within the common judicial system, which would handle the cases in the field of copyrights and related rights, intellectual property and unfair competition.
The obligation of legal representation
According to the new regulations of the Civil Procedure Code, the representative of a party can be an advocate or a legal counsel, and also a patent attorney in intellectual property matters. The same rules or representation will apply before the Supreme Court. In the proceedings concerning intellectual property matters it will be obligatory for a party to be represented by an advocate, legal counsel or a patent attorney. However, the obligation of representation shall not be applicable, if the value of the subject of the dispute is below 20 000 PLN (approximately 5 000 EUR). The court will be able to release the party, upon the party’s request or ex officio, from the obligation to be represented by a professional representative, if the circumstances in the matter – including the degree of complexity – do not justify the need of legal representation.
The types of intellectual property cases to be handled by courts
The new regulations concerning the proceedings in intellectual property matters will be applicable to the disputes over the following:
– protection of copyrights and the related rights;
– protection of inventions, utility models, industrial designs, trademarks, geographical indications, topography of integrated circuits;
– protection of other rights to non-material assets;
– preventing and combating unfair competition;
– protection of personal rights, in the scope that the given personal right is used for individualization purposes, advertising and promotion of an entrepreneur, or entrepreneur’s goods or services;
– protection of personal rights connected with scientific or inventive activity.
How to find the court with the appropriate jurisdiction?
Jurisdiction according to the subject of the dispute
Intellectual property cases will be within jurisdiction of district courts, and the District Court in Warsaw will be the only competent court for dealing with intellectual property cases concerning computer programs, inventions, utility models, topography of integrated circuits, new plant varieties and company secrets having technical nature.
Jurisdiction according to the locality
It is assumed that specialized court departments for examining intellectual property cases in the first instance will be established in four district courts: Gdańsk, Lublin, Poznań and Warsaw. All the above mentioned courts will also have jurisdiction over intellectual property cases concerning European Union Trademarks and Community Designs. In two courts of appeal, namely in Poznań and Warsaw, there will be established specialized departments for examining intellectual property cases in the second instance.
New procedural measures
Three new procedural measures will appear, namely: the securing of evidentiary materials, revealing or providing evidentiary materials, and the request to provide information. These measures are intended to be supplementary in relation to one another, and their objective is obtaining information about the factual basis of claims to be raised. The choice of a procedural measure will depend on the kind of the right to be enforced and the particular circumstances in the case.
Within the provisions concerning particular claims, the parties shall have the right to make counterclaims and make claims for determining that specific activities do not infringe third parties’ rights.
Drafting the Act and reality – when effects are to be expected?
It is proposed that the above discussed amendments be assessed after 4 years from the implementation of the Act. The following factors are recommended to be taken into account: the number of IP cases filed to the newly established court departments in district courts and the courts of appeal, the index of control of submission of new cases in the above court departments, the number of cases per one judge, and the concentration of the number of cases according to the locality.
Joanna Rafalska is Trademark Attorney Trainee in the department of trademarks and industrial designs. She graduated from law at the Catholic University of Lublin, and completed post-graduate studies in intellectual property law at the Jagiellonian University. At Patpol, she supports the work related to obtaining and maintaining protection of trademarks and industrial designs of our clients. Contact with the author