As we recently discussed, on 1 July 2020 provisions introducing a new type of separate procedure in intellectual property cases will enter into force, as well as new institutions designed to strengthen the protection of IP rights and harmonise the provisions implementing the IP Enforcement Directive (2004/48/EC), which have been dispersed around several different acts of Polish law. Among other things, this will change the rules for preserving evidence of infringement. It will also be possible to demand that evidence be produced or turned over.
Implementation of the IP Enforcement Directive introduced into the Polish legal system measures facilitating the pursuit of claims for protection of intellectual property rights. These involve in particular information claims and demands to preserve evidence.
The amendment entering into force at the start of July changes the rules for preserving evidence and also introduces the entirely new institution of the demand to disclose or turn over evidence. We discuss both of these below. An examination of the changes involving information claims will be the subject of another article.
How is it now?
Currently, the holder of rights to a patent, supplementary protection certificate, trademark, industrial design, or plant variety, or a person with an interest in a case involving infringement of economic copyright or sui generis rights to databases, may seek preservation of evidence concerning the infringement.
This right is a special regulation in relation to Art. 310 of the Civil Procedure Code, which concerns the possibility of seeking to preserve evidence before commencement of proceedings in any civil case. The institution of preserving evidence under Art. 310 is used for early admission of evidence if there is a concern that it will not be possible to take the evidence during the course of the trial on the merits. This involves situations where, for example, it is necessary to conduct a site visit before demolition of a building, or to question a seriously ill witness.
The aim of preserving evidence in proceedings for protection of intellectual property rights is different. This institution is designed to help obtain evidence confirming the fact of infringement of IP rights which would be difficult or impossible to obtain other than from the alleged infringer. The conditions that must be demonstrated by the applicant are also different. First, the applicant must substantiate its claim and its legal interest in obtaining an order for preserving evidence. However, because these procedures have the same name (zabezpieczenie dowodu), the predominant view in the case law is that a person applying for preservation of evidence of infringement of IP rights must also demonstrate the general grounds set forth in Art. 310 and following of the Civil Procedure Code. Thus, so far the essence of this procedure has been perceived as addressing a situation where due to the passage of time or other circumstances, the evidence could not be taken during the trial on the merits. This could arise for example out of a fear of destruction of documents or objects showing an infringement, where there is no duty to preserve them under other regulations or the retention period is relatively short. Under the existing regulations, the relief sought in the application to preserve evidence might include, for example, ordering the respondent to submit certain evidence (e.g. devices) to the case file, turn over items to the rightholder or provide access for an inspection, or ordering an expert opinion.
What will change?
Preservation of evidence
From 1 July 2020, the grounds for applying for preservation of evidence in any case involving intellectual property rights will be regulated in the Civil Procedure Code, not in separate intellectual property acts. As now, it will be possible to assert such a demand prior to commencement of the proceeding or during the course of the proceeding.
According to the justification for the bill, the aim of this institution is to be only physically obtaining the material from which evidence may be admitted, and not actually admitting evidence prior to commencement of the main proceeding, as is the case with the procedure set forth in Art. 310 of the code.
The act provides a list of examples of means of preserving evidence, such as seizure of goods, materials, documents, and implements used in production or distribution of goods, as well as a detailed description of such items, combined with taking samples where necessary.
The wording of the new provisions raises doubts whether this procedure will be available only to holders of intellectual property rights in the strict sense, or also entities seeking protection under the Unfair Competition Act or protection of personal interests in the categories of cases deemed by the parliament to qualify for consideration in the separate procedure for intellectual property cases (Civil Procedure Code Art. 47989). The code calls for application of section IVg, “Procedure in intellectual property cases,” to all intellectual property cases as defined in the Civil Procedure Code. At the same time, however, the amendment leaves the regulations concerning procedural rights scattered among the specific acts governing the rules for dealing with particular types of intellectual property rights, amending the content of these regulations and including a cross-reference to the regulation in the Civil Procedure Code. But it was decided not to include analogous provisions in the Unfair Competition Act or the section of the Civil Code governing personal interests. Thus it is unclear how the courts will apply these provisions in practice.
Enforcement of orders on preservation of evidence in intellectual property proceedings has been entrusted to the bailiffs. The amendment also provides that when needed the court can summon an expert to take part in activities connected with enforcement of such orders.
Under the new regulation, an applicant seeking to preserve evidence will have to:
- Substantiate the existence of a claim
- Demonstrate a legal interest in preserving evidence, and
- Specify the evidence and how it should be preserved.
Art. 47998 §2 provides that a legal interest in preserving evidence will exist in situations where:
- Failure to preserve the evidence would prevent or seriously hinder assertion or proof of material facts
- There is a risk of destruction of evidence, or delay in obtaining evidence could prevent or seriously hinder achievement of the aim of the evidentiary proceeding, or
- For other reasons there is a need to establish an existing state of affairs.
To balance the interests of adversaries, the act provides that the court shall specify in the order the scope of review of the preserved evidence by the holder, as well as specific rules for examination and use of the evidence. In particular, the court may restrict or exclude the right to copy or otherwise record the evidence.
For the same reason, the bailiff is required to deposit with the court the evidence obtained based on an order, and not deliver it to the rightholder. The applicant may examine the evidence obtained from the alleged infringer only when the order becomes legally final, and thus after the court considers arguments by the respondent against granting the application, if the order is appealed against.
If the court grants the application before the proceeding in the case is commenced, the plaintiff will have at least two weeks, and a maximum of one month, to file suit after the order becomes legally final, in other words, from the time when the rightholder gains the opportunity to examine the evidence.
An application to preserve evidence is currently subject to a fee of PLN 200, and that fee will not change (Art. 26a(2) of the Act on Court Costs in Civil Cases).
An order on preservation of evidence will be subject to an interlocutory appeal to the court of second instance (Civil Procedure Code Art. 479100 §4), which is different than in the case of review of typical orders on interim relief securing claims, which are considered by a three-judge panel of the same court that issued the order appealed against (Art. 741 §2).
Disclosure or production of evidence
Apart from the institution of preserving evidence discussed above, during the course of proceedings concerning infringement of intellectual property rights, the plaintiff may demand that the defendant disclose or produce evidence in its control.
In particular, this right is designed to facilitate the disclosure of banking, financial and commercial documents in the defendant’s possession. Before ruling on such a request, unlike in the case of a demand to preserve evidence, the court will have to allow the defendant to respond to the application, within no less than two weeks. If the defendant does not voluntarily comply with the order and turn over the evidence sought, enforcement of the order will generally be entrusted to the bailiffs. In some respects, the procedure of judicial execution for non-monetary performance may also be applicable. Plaintiffs will thus gain the possibility of compulsory execution of duties arising out of the court order, which so far they have not had. Currently, even if the court grants the plaintiff’s request to oblige the defendant to submit documents based on Civil Procedure Code Art. 248, there is no option for demanding enforcement of the obligation arising out of the court’s decision through execution proceedings.
As in the case of preservation of evidence, the act provides a mechanism for protection of trade secrets by giving the court discretion in scheduling the date for disclosure or production of evidence, setting the rules for examining and using the evidence, and also imposing restrictions to protect confidential information.
If the defendant refuses to comply with the order or intentionally destroys evidence, the court will be entitled to deem the facts that were to be proved using the evidence as established, and to charge the defendant with full reimbursement of the costs of the proceeding regardless of the result in the case.
Filing of an application for disclosure or production of evidence will be subject to a fee of PLN 200. In the case of such an order, the defendant will have a right of interlocutory appeal to the court of second instance (Civil Procedure Code Art. 479110 §1), as in the case of preservation of evidence.
Hopefully, introduction of the new institution of disclosure of evidence, and amendment of the provisions on preservation of evidence, will encourage holders of intellectual property rights to enforce to a greater degree their claims against infringement of their rights.
The new regulations will be important in all cases where access to evidence confirming the fact or scale of infringement of IP rights has been hindered, as for example in the case of online infringements.
Ewa Nagy, attorney-at-law, Intellectual Property practice, Wardyński & Partners