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Motion for injunctive relief in intellectual property cases – amendments to Polish civil procedure

In July 2023, an amendment to the Polish Code of Civil Procedure will come into force, which in its premises implies structural changes in granting interim protection in intellectual property cases. The amendment therefore changes the rules for assessing the plausibility of a claim. Until now, a right holder had to show that the existence of the exclusive right from which it was deriving its claim, such as a patent or trademark protection right, was plausible and that it had been infringed. Under the new regulations, the plausibility of invalidation of an exclusive right in a separate proceeding, if any, must also be considered when the plausibility of claims is being examined.

This means that if the defendant is questioning the validity of the claimant's IP rights (e.g., patent of trademark) or such validity is being questioned by a third party, the defendant may successfully challenge the attempt to obtain an injunction.

In practice, under new rules obtaining interim injunctions in Poland may turn out to be more difficult than before and it may take more time before an injunction takes legal effect. It needs to be monitored how courts would apply such new provisions, though.

Key issues

Plausibility of a claim:

  • If proceedings for invalidation of an exclusive right are pending concurrently, the court must take this into account when ruling on the injunctive relief, assessing the likelihood of such invalidation (in the main proceedings or in administrative proceedings before the Polish Patent Office). The fact of the aforesaid probability of invalidation is additionally determined by the court based on information from the parties, unless it is known to the court ex officio – therefore, the IP holder has a new obligation to provide information on invalidation proceedings in the motion for injunctive relief.

Contradictory nature of proceedings for injunctive relief

  • After the amendments have come into force, the court may grant injunctive relief only after hearing the obligor (alleged infringer), therefore the court may grant injunctive relief only after hearing the obligor. Exceptions will apply, for example, when it is necessary to immediately resolve the motion or methods of injunctive relief enforceable in their entirety by a bailiff. In intellectual property cases, this will apply mainly to the seizure of infringing goods.

New premise - "Timeliness"

  • The amendment introduces the new premise of timeliness, according to which the court will dismiss a motion for injunctive relief if it is filed more than six months after the date the party or participant in the proceedings became aware of the infringement of its exclusive right.
  • Previously, there was no specific deadline for taking an action but if the infringement was persisting for a longer period of time, courts tend to deny protection. In that respect the amendment would give claimants more certainty as to how long they can wait until they file for injunction.
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