Clifford Chance

Infringement claims, like all property claims, are subject to the statute of limitations, and the same goes for all IP rights. As in most European countries, claims in the Polish legal system become time-barred three years from the date on which the party entitled to the industrial property right in question learned of the infringement and of the party which infringed that right, with this applying separately for each individual infringement. In any case, the claim shall be barred once five years have elapsed from the date on which the infringement occurred. Under industrial property law, the statute of limitations is a limitation period for bringing infringement actions for non-pecuniary claims.

However, how does the law deal with the continuous and repeated infringement of a trademark over a number of years? Is the possibility of prohibiting the proprietor from unauthorized use of the trademark also excluded once five years have elapsed in cases where the unlawful use in question occurs not just once, but on several occasions?

Interpretation of the types of infringement determining the commencement of the statute of limitations

Under Polish law, there are several types of infringement, including those of a repeated, continuous or one-time nature. Prior to the Polish Supreme Court decision reached by an enlarged panel of 7 judges (III CZP 30/20, dated 18 May 2021), the courts usually ruled that a repeated infringement constitutes a continuous infringement. In considering continuous and repeated infringements as being identical, it was assumed that the statute of limitations begins with the initial infringement, which is then subsequently repeated.

However, it seems that approach was wrong. Such an interpretation closes the path to claims for the trademark holder in those cases where a third party infringes the right by carrying out its normal activities, thereby continuously repeating the infringement (for instance, by manufacturing the same products bearing the infringed mark). Such situation arises because the infringement of an exclusive right to a trademark occurred upon initiation of the activity and became a continuous (repeated) infringement by virtue of performing that same activity over and over again. Polish courts have, until recently, treated those situations as constituting one infringement for the purpose of establishing when the statute of limitations commences. The courts' rationale was that the statute of limitations should serve the function of disciplining and mobilizing an entitled party to pursue claims. Consequently, an interpretation of this issue by the Supreme Court was both much needed and eagerly awaited.

For years, the question has been raised whether the mere fact of becoming aware of a repeated infringement precludes the possibility of pursuing claims relating to subsequent infringements by the same party. However, the issue of mere knowledge of repetitive infringement was irrelevant in determining the criteria for identifying when the limitation period begins. Infringements of industrial property rights most frequently take the form of repeated actions over a certain period of time (including marking goods with a trademark) or single acts with effects lasting continuously for months or even years (e.g. incorporating someone else's trademark into your own trademark), which results from the very nature of industrial property rights. The issue under consideration was therefore the appropriateness of enabling the trademark holder to bring a claim for cessation of use of the mark with respect to one individual act forming part of the recurring activities, commenced earlier than the statute of limitations would allow.

The decision of the Polish Supreme Court

Infringement, as a continuous act, occurs when a third party enters the sphere of exclusivity protected by and for the right holder. In the decision in question, the infringer manufactured accessories for cars (“grills”) and used a trademark on them which was very similar to Audi's (wheel rim designs – EU trademark). The infringer’s activity was continuous as it had been manufacturing the accessory for well over five years. However, the owner of Audi's EU trademark had only recently initiated legal proceedings to bring non-pecuniary claims, that is, claims for cessation of use and destruction of “grills” bearing the Audi trademark. Both the court of first instance and the court of second instance recognized the statute of limitations raised by the infringer, but due to the determination of the right holder and the lack of uniformity in the interpretation of “continuous/repeated infringement”, the case reached the Polish Supreme Court.

The issue was therefore which point in time to apply when calculating the statute of limitations for non-pecuniary claims for the protection of a trademark – from the first day of infringement or otherwise, given that the infringer's actions were not a one-off, but were continuous, repetitive, and ongoing at the time the claims were filed. It is necessary for a single infringement to produce a specific, individual copy of a given product infringing the right holder’s exclusive right, even if that action is only one of many acts over a long period of time. The recent decision by the Supreme Court confirms that, in those cases where there are multiple repeated acts, they should be treated as separate acts of infringement and the statute of limitations should run separately for each infringement. Significantly, this decision applies equally to EU and national trademarks. A different interpretation would result in many entities being able to simultaneously exercise one exclusive right without any information being entered in the relevant registers.

Conclusions

In terms of industrial property right infringements, there is rarely one single infringement lasting several years and it is much more common for there to be many individual infringements. As explained above, the statute of limitations runs separately for each infringement claim, from the day on which the respective infringement occurred. This interpretation of the law paves the way for bringing non-pecuniary claims in respect of repeated infringements of industrial property rights in Poland. Commencing the statute of limitations as of the date of the initial infringement for all subsequent infringements, regardless of the length of the infringement period, is inconsistent with the nature of the right. This is because the right holder is entitled to protection for the entire period for which the trademark was granted.

The decision cuts through a long-disputed issue and is important for marks protected by EU and national law. It provides robust protection for industrial property rights and means that those parties entitled to use a trademark – regardless of whether it is a national or EU mark – have the possibility to protect their rights from any illegal use of the trademark in Poland for up to five years.