In 2007 the Polish legislature introduced Article 2861(1)(3) of the Industrial Property Law, an information claim mechanism, with the aim of implementing Article 8 of the EU IP Enforcement Directive (2004/48/EC).
Under Article 2861(1)(3), before a party brings a case to court, the courts examine:
- the application of the holder of, respectively:
- the patent;
- an additional right of protection for inventions;
- a right of protection for utility models and trademarks; or
- a right in registration for industrial designs, topographies of integrated circuits and geographical indications (IP rights); and
- the application of a person to whom it is permitted by the Industrial Property Law to secure claims by obliging a person other than the infringer to provide information on the origin and distribution networks of infringing goods or services where the infringement of IP rights is probable and said person:
- possesses infringing goods;
- has been found to use infringing services;
- has been found to provide services used in infringing actions; or
- has been indicated as participating in the production or distribution of infringing goods or the provision of infringing services and the above activities are aimed at obtaining, directly or indirectly, a profit or other economic benefit.
The EU IP Enforcement Directive aims to ensure a high level of protection of IP rights in EU member states. The information claim mechanism was intended to help rights holders obtain information concerning rights infringements and determine the infringer's scope of liability. Such information is generally required to effectively seek legal protection in civil court proceedings. However, due to the ambiguity of the new provision being introduced into the Polish legal system and discrepancies with the EU IP Enforcement Directive, the information claim mechanism's scope has been criticised by Polish jurisprudence.
No link between right to information and judicial proceedings
Under the EU IP Enforcement Directive, a request for information should be made in the course of court proceedings. However, under the Industrial Property Law a request for information can also be made before a lawsuit is brought before a court. Under Article 2861(1)(3), rights holders whose information claim has received court approval are not obliged to enforce their rights in court.
In addition, the legislature has defined the right to information as a form of 'security of claims', which raises serious doubts regarding the nature of the mechanism and its place in the Polish legal system. The term 'security of claims' refers to an institution governed by civil procedure law which, in contrast to the right to information, aims to secure enforcement of a judgment or achieve the aims of a case. The erroneous wording therefore raises doubts as to the nature of the right to information and its interdependence with provisions regarding the security of claims.
Difficulties in identifying who should provide information
It is unclear which entities must provide information. The Industrial Property Law specifies that this obligation applies to "a person other than the infringer" who, among other things, owns goods that infringe another party's rights or participates in the production, manufacture or distribution of goods that infringe said rights. However, such persons are usually also infringers and therefore not "persons other than the infringer" (ie, third parties). Legal doctrine indicates that this ambiguity could be removed if information claims were linked inseparably with court proceedings concerning the protection of IP rights. Any person who is not a defendant in a case could be considered a person other than the infringer within the meaning of the Industrial Property Law.
Due to the EU IP Enforcement Directive's incorrect implementation, legal doctrine has called for, among other things, the repeal of the relevant Industrial Property Law provisions or for the courts to refuse to apply them due to their incompatibility with Article 8 of the directive.
The Constitutional Tribunal's 6 December 2018 judgment resolved many of the doubts raised regarding in the legal doctrine. The court recognised that Article 2861(1)(3) of the Industrial Property Law does not comply with the Constitution, which resulted in the provision's removal from the Polish legal system.
The Warsaw Regional Court had ordered the owner of an online auction portal (claimant) to provide information on the origin of car accessories bearing protected trademarks that were offered for sale by certain users. The court demanded information concerning:
- the users' business names or names and addresses;
- the quantity of goods for sale bearing the protected trademark;
- the amount of goods being sold; and
- the profits obtained from the sale of said goods in the designated period of approximately 10 years.
The court held that the claimant could be treated as a third party obliged to provide information under Article 2861(1)(3), as it provided services used in actions that infringed protected trademark rights.
The claimant lodged an appeal against the regional court order, but it was dismissed. As a result, the claimant filed a constitutional complaint, in which it stated the following:
- The information claims mechanism constitutes a restriction on economic freedom, as the obligations imposed on non-infringing entities are disproportionate. Further, there was no link between information claim procedures and proceedings against infringers, nor were there any links between the scale of the alleged infringement and the scope of information requested.
- An entity obliged to provide such detailed information about its counterparties and the extent of the benefits obtained must disclose its business secrets. At the same time, the Industrial Property Law provides no protection against the unauthorised use of information obtained by a private entity.
The Constitutional Tribunal pointed out that Article 2861(1)(3)'s aim was to secure claims by obtaining certain information, and it stressed that the essence of the claims securing procedure was its reversible nature. However, the obligation set out in Article 2861(1)(3) resulted in the provision of commercial information irrespective of the further course of the infringement dispute, which could have irreversible consequences. Under the current wording of the discussed provision, this mechanism could be used to obtain information without further judicial action, which provides no adequate guarantees that the information obtained will be used to pursue claims in court.
Further, the Constitutional Tribunal pointed out that it is impossible to determine on which parties a request for information can be made, as it is unclear from the Article 2861(1)(3) when a third party is considered an 'infringer' and when it is 'another person'.
As a result, the Constitutional Tribunal held that Article 2861(1)(3) was unconstitutional and, in a situation where no court proceedings concerning the infringement of industrial property rights were undertaken, it was not in the public interest to reveal potential business secrets.
Following the Constitutional Tribunal's ruling, the scope of the legal mechanisms to obtain information needed to determine the scale of an IP rights infringement has been reduced. However, the decision also makes it possible to protect entrepreneurs from the unjustified and unnecessary disclosure of business secrets.
For further information on this topic please contact Szymon Gogulski or Jacek Zwara at Soltysinski Kawecki & Szlezak by telephone (+48 22 608 7000) or email ([email protected] or [email protected]). The Soltysinski Kawecki & Szlezak website can be accessed at www.skslegal.pl.
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