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Gathering evidence of infringement

Businesses suspecting that their copyrights, trademarks, patents or industrial designs are being infringed by competitors often find it difficult to obtain evidence of the infringement sufficient to make a case in court. They are also concerned that if they wait until filing of the statement of claim to seek production of evidence, the defendant will have time to get rid of the evidence of the infringement.

This is most often the case when the infringing product (e.g. machinery infringing a patent or equipment containing copyrighted software) is not available on the market but remains under the exclusive control of the infringer, or the product is offered only in wholesale quantities or to order, or consists of semi-finished goods intended for a specific customer. It would be difficult or impossible to obtain samples of such a product.

One way to conquer this hurdle is to apply to the court for an order securing the evidence of the infringement of the claimant’s intellectual property rights. Such an application may be filed before commencement of the main infringement proceeding.

In Poland, it is accepted that securing evidence may consist of preparing a detailed description of the infringing product, taking samples of the product, physical seizure of the infringing products, and, in certain instances, seizure of the materials and equipment used for production or distribution of the products, or related documents. Based on recent case law, one possible method for securing evidence is to order the suspected infringer to submit a copy of equipment containing certain software.

There are differing views on what conditions must be fulfilled before the court will grant the application, but the practice suggests that the courts increasingly grant such security, particularly in the case of copyright infringement. The courts are beginning to indicate that they will order disclosure of evidence accessible only to the suspected infringer, to secure the evidence against concealment or destruction. There is a danger that this would occur if the plaintiff whose rights are violated included a motion to secure the evidence in the statement of claim, leaving the defendant time to conceal or destroy the evidence before any action is taken before the court. Securing the evidence then serves to maintain the evidence physically before commencement of the trial, and not to admit such evidence. The evidence will not be admitted until after the trial begins, for example when the court conducts an inspection or an expert prepares an opinion based on the evidence.

The courts also indicate that the method of security imposed must not be overly burdensome, and must not require disclosure of trade secrets. Based on court decisions, it would be considered overly burdensome to seize the hard drives of all of the computers used by a suspected infringer, because that could effectively prevent the defendant from operating its business.

In the case of infringements that are not easy for the holder of intellectual property rights to verify, applying to the court to secure evidence of infringement can be a valuable method for obtaining and maintaining evidence of the infringement for use in the future trial. The practice in Poland shows that businesses increasingly often follow this method and obtain favourable rulings from the courts.

Katarzyna Pikora, Intellectual Property Practice, Wardyński & Partners