The Future of Intellectual Property

Interim Injunction Proceedings in IP Cases

IP expert Bartosz Jankowski takes a deep dive into the changing face of interim injunction proceedings in intellectual property cases.

On 1 July 2023, an amendment to Poland’s Code of Civil Procedure came into force, implementing revolutionary changes in interim injunction proceedings in intellectual property cases. Its intention is to balance the position of the parties in these cases and to reduce the abuse of temporary injunctions by right holders.

Interim measures procedures are – as a rule – conducted ex parte, based strictly on the information and evidence presented by the party seeking such measures in Polish procedural law. Therefore, in many cases the obliged party is able to take defensive steps only after the measures take effect. The relative ease of obtaining interim measures, the limited scope of the obliged party defence and the far-reaching effect of interim injunctions in IP cases (such as seizing company goods or imposing a ban on marketing goods or services) made seeking interim injunctions in IP cases a potentially dangerous tool for combating competition.

What has changed?

Poland’s legislators have decided to strengthen the position of the obligated party by introducing more rigid rules for obtaining security in IP cases:

1. The current obligation to prove legal interest in receiving the interim injunction is now to include an assessment of the probability that the exclusive right for which the claimant seeks protection will be invalidated in other pending proceedings.
2. Introducing a rule that – unless it is necessary to resolve the request immediately – the granting of the interim injunction needs to be preceded by hearing the obligated party’s position. This new rule will not apply to interim measures enforceable by a bailiff (such as seizure of goods).
3. Limiting the time for filing an application to obtain an interim injunction to 6 months after becoming aware of the infringement of the party’s exclusive rights, the expiry of which will make the application inadmissible.

Overview of changes

1. Probability of exclusive right invalidation

The first of the key changes extends the scope of what the court needs to analyse when considering the legal interest of the party seeking injunction. Upon entry into force of the amendment, the court needs to assess, whether the exclusive right for which the claimant seeks protection is at risk of invalidation in other pending proceedings.

This change could prove to be a significant burden for the courts presiding over interim measure cases. With some IP cases pertaining to matters requiring an in-depth specialised knowledge of particular subjects (such as patents, computer programmes, integrated circuit topography etc.), assessing whether there is a risk of invalidating the exclusive right of the party seeking injunction could result in lengthy and complicated evidentiary proceedings that the interim measure courts are not entirely fit for. This will lead not only to extending the length of the process, but also to an extensive overlap between the evidentiary proceedings of the interim measures court and the patent authority presiding over exclusive right invalidation cases.

2. Contradictory proceedings

Introducing contradictory proceedings to interim measure cases in IP cases is an unequivocally desirable change. Due to the sometimes extremely far reaching consequences of interim injunctions in IP cases, the trade-off between the swiftness of proceedings and protection of the obligated party is a fully justified one. However, this does not apply to interim measures enforceable by a bailiff.

The exclusion of bailiff enforceable measures is worrying. Obligated parties could still be “surprised” by injunctions such as a seizure of goods, and acquire the right to defend themselves only after the bailiff has enforced the interim measure. This means, that parties seeking to abuse interim injunctions in IP cases against competition could still benefit from such measures.

3. Six-month time limit

The introduction of a six-month time limit for filing a motion for interim measures after becoming aware of the infringement of the party’s exclusive rights is a welcome regulation of the existing judiciary practice. However, the wording of the new regulation raises concerns due to the rigid nature of the time limit. It fails to take into account the varied nature of IP cases. While a six-month time limit may be appropriate for infringements of trade marks, it could be found emphatically too short for complicated instances of infringements against patents or copyrights to software. The new regulation does not account for that, which may force injured parties in such cases to seek interim measures without due preparation.

Additionally, the new regulation raises doubts as to its meaning. Firstly, it is not clear when exactly a party becomes aware of an infringement. The new regulation does not elucidate whether the moment of becoming aware of the infringement includes becoming aware of the infringing party, or only of the infringing act. It also does not specify the level of certainty required for the time limit to begin. Secondly, the wording of the regulation could also raise doubts whether the time limit pertains to cases of unfair competition or personal rights.

Evidentiary issues on the subject are a separate matter, particularly with the possible practice of infringing parties who, in the case of conscious violations of exclusive rights, may commit small-scale infringements in the first few months in order to limit the right holder’s ability to protect its rights.

In conclusion

The changes, although moving in the right direction, may create a far-reaching sense of uncertainty for businesses and intellectual property rights holders. It will be crucial to observe the case law in the following months to see how the new regulations are being interpreted by the courts.

Should you need support on IP matters, please get in touch Bartosz Jankowski.