Poland’s preliminary injunctions set to become a scarce commodity

Richard, the Polish Kat,
is not a fan of change

The AmeriKat has been in New York this week for the 30th Fordham IP Conference.  This is the first time the conference has been held in person since before the pandemic.  It was equally exciting, overwhelming and emotional to see old and new friends, debate important IP issues and look to the future changes in IP.  There will be conference reports coming in the next few days from a team of wonderful Kat contributors.  

In the meantime, we are looking to the future of IP in Poland with a wonderful guest post from Dawid Sierzant (SDP Sierżant Dudziński sp.j.).  Over to Dawid:

"Katreaders from Poland are sharpening their claws as new rules on preliminary injunctions in IP cases will come into effect on 1 July 2023.

The intention behind the changes is clear - preliminary injunctions (PIs) will be much harder to get. They were, says the legislator, granted too recklessly, plaintiffs requested them too one-sidedly, and damage done was too irreversible.

Old times

Indeed, for many years PIs in Poland were granted a bit too easily. Almost always ex-parte, immediately enforceable, with a short 7-day time limit to appeal.

Annoyingly, defendants had to monitor court dockets if they “felt-at-risk”. And not every court would provide information on pending PIs. If a PI was luckily discovered, defendants filed protective briefs. Some courts would accept them. Others would not. Most judges would not assess the validity of an IP right when deciding on a PI. Those judges claimed they are bounded by the grant decision. But others considered the validity argument anyway, often off the record (the validity issue was not mentioned in written reasons but “we all knew”).

Chaos and misery, for defendants, prevailed.

Since 2020, when specialized IP courts kicked off in Poland, there has been a gradual movement towards a more restrictive approach to the PIs. The Regional Court in Warsaw surprised many Katreaders when it started to schedule oral hearings in PI cases (courts always had this option, but rarely used it). The same court started to deny PIs if a right holder tolerated infringement for an extended period. A sort of urgency requirement, quite arbitrarily applied.

New times

The legislator stepped in and, as part of a bigger reform of the civil procedure, decided to deal with the issue. As a result, revolutionary provisions on the PI procedure have been adopted. But no worries, you do not need your IP right to be crash-tested in the invalidity proceedings to get a PI. So it could have been worse! Still, new rules are game changers, in particular for IP-sensitive industries such as pharma.

The highlights of the new PI procedure are listed below:

1.  Urgency as a legal requirement – a right holder must file for a PI within six months from the date it became aware of the infringement. Otherwise, the court is obliged to deny a PI.

2.  Six months is considered a rational time limit by Polish Katreaders. First of all, it is noticeably longer than in Germany. We will see how the date of “becoming aware” will be interpreted. And how the burden of proof will be distributed in discussions about this date.

3.  Validity will be assessed – the court will consider the likelihood of invalidation of an IP right in other proceedings; when filing for a PI the plaintiff must declare if there was/is any ongoing invalidation action related to his IP right.

4.  Linguistic interpretation indicates that validity should be taken into account only if the invalidity action is already pending. If so, it would mean significant adjustments to old litigation roadmaps, both for plaintiffs (why send C&D letter) and for defendants (first file for invalidation, then think). We will see how this provision will be applied in practice. A wider interpretation will likely prevail.

5.  Inter partes by default – PIs will no longer be decided without the participation of the defendant. Well, except for “exceptional circumstances” (e.g. trade fair), cases where enforcement is by the bailiff (seizure of goods being the most common scenario), and cases where a compulsory administrator is appointed (never seen it in my life in IP litigation).

6.  The question is what would happen in a very usual situation – when both cessations of use and seizure are requested within the same PI request. Based on the wording of the regulation and documents from the legislative process, it seems the intention was to have an inter partes procedure always when a cessation order is being decided. The legislator considers a market ban to be a more burdensome measure than a casual bailiff seizure. And quite rightly so.

7.  The real appeal is back – in the previous reform of the civil procedure, the legislator had not a great idea. It thought it would speed things up if PI appeals are decided by another panel of the same court (i.e., it would not go to a higher instance). They called it “horizontal appeal”. As a result, a losing party needed a lot of force to be with it to win on appeal. In particular, the force needed to be with you when an appeal was decided by an office roommate of a judge that issued the first instance decision. Fortunately, the legislator has now retreated from horizontal appeals. PI appeals will go to the court of the higher instance once again.

The reform changes the rules of the game in IP litigation. It remains to be seen who will emerge victorious from this new reshuffle. Stay tuned."