Trade-Related Aspects of Intellectual Property Rights - Checklist of Issues on Enforcement under TRIPS Art. 63.2

2. Which persons have standing to assert IPRs? How may they be represented? Are there requirements for mandatory personal appearances before the court by the right holder?

The author or other persons who acquired author's economic rights through inheritance or by contract as well as organizations for the collective administration of the copyright. The author may act on his own, may be represented by signing the power of attorney or represented by organizations for the collective administration of the copyright. There is no requirement for mandatory personal appearances before the court by the right holder.

3. What authority do the judicial authorities have to order, at the request of an opposing party, a party to a proceeding to produce evidence which lies within its control?

The court competent to hear the case may oblige the party infringing an author’s economic rights to provide information and access to documentation which is substantial for the claims, but there are no direct consequences for the party refusing to obey such an obligation. According to general rules of civil proceedings, it is up to the court to assess the meaning of such a refusal.

4. What means exist to identify and protect confidential information brought forward as evidence?

The court hearing the case at the request of an opposing party may oblige a party to keep confidential information secret. There are no detailed provisions on the confidentiality of proceedings.

5. Describe the remedies that may be ordered by the judicial authorities and criteria, legislative or jurisprudential, for their use:

injunctions;
damages, including recovery of profits, and expenses, including attorney's fees;
destruction or other disposal of infringing goods and materials/implements for their production;
any other remedies.

The court may make orders: to cease infringements of the author's economic rights, and to undertake all the necessary actions to eliminate the infringement's effects; to render the unlawfully acquired benefits of such infringement and to repair the damage suffered both as damnum emergens and as lucrum cessans (Article 79 of the Polish Copyright Act). If the author's moral rights have been threatened, the court may order an opposing party to cease such actions. If the author's moral rights have been infringed, the court may order an opposing party: - if such infringement was culpable the court may award the author a certain amount of money to repair the suffered damage (Article 78 of the Polish Copyright Act). The court may order a party to pay the fee of the attorney of an opposing party, according to the regulations for such fees. The general jurisprudential criteria of such remedies are: the existence of the loss (damage) suffered or of the loss of amenity, causal nexus and guilty intention of a party or unintentional guilt. The court competent to hear the case shall order forfeiture (for the benefit of the State Treasury) of unlawfully produced copies of the works. The court may order forfeiture of objects used for unlawful production of copies of work or the objects by means of which the infringement was committed (Article 80, paragraphs 2 and 3 of the Polish Copyright Act).

6. In what circumstances, if any, do judicial authorities have the authority to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the goods or services found to be infringing and of their channels of distribution?

There are no specific provisions.

7. Describe provisions relating to the indemnification of defendants wrongfully enjoined. To what extent are public authorities and/or officials liable in such a situation and what "remedial measures" are applicable to them?

There are no such special provisions. There are no legal possibilities to sue public authorities and/or officials in cases of defendants wrongfully enjoined.

8. Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost.

In the usual procedure there are no provisions governing the length of proceedings except the general rule that in a proceeding to secure claims the court competent to hear the case should consider the application of a party within three days. The appeal against such an order should be considered within seven days. In claims ensuing from property rights a party deposits in advance the specified sum of costs of the proceedings, around 8 per cent of the claimed sum. In other claims costs of proceedings are relatively small. To these costs one should add attorneys' fees, which are regulated by a special Act. In practice the main problem affecting the Polish justice system appears to be the time taken to process cases in particular in the field of civil law. No precise data is available. The length varies greatly between district courts. According to law, the fees of attorneys are fixed by the Act.

(b) Administrative procedures and remedies

9. Reply to the above questions in relation to any administrative procedures on the merits and remedies that may result from these procedures.

If the infringer is a company acting on an administrative authorities license, this license could be withdrawn. There are no specific provisions for asserting intellectual property rights.

5. Provisional Measures

(a) Judicial measures

10. Describe the types of provisional measures that judicial authorities may order, and the legal basis for such authority.

The court shall consider, before the suit is brought, the application of the party having legal interest therein within three days from the date of bringing such an application to the court for: securing evidence; obliging the other party to provide information and access to documentation; securing claims arising from the infringement of the author's economic rights by issuing a proper temporary order (Article 80 of the Polish Copyright Act).

11. In what circumstances may such measures be ordered inaudita altera parte?

In all of the cases mentioned above.

12. Describe the main procedures for the initiation, ordering and maintenance in force of provisional measures, in particular relevant time-limits and safeguards to protect the legitimate interests of the defendant.

An interested party lodges the written application with the court. The court awarding the temporary measure gives to the plaintiff up to two weeks' time to lodge a proper suit with the court. If such a suit is not brought in time, the temporary measure expires. The court may condition the issuance of temporary measures on making an appropriate deposit. In principle, the temporary measure remains valid pending all the proceedings. The other may at any time complain against the measure and demand its removal. If the plaintiff loses the case, the other party is entitled to demand all damages caused by the temporary measures applied.

13. Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost.

The court should award the measures within three days from the request. The other party has seven days to appeal. As to the length of proceedings there are no precise data available. The costs are around 1.5 per cent of the overall claimed sum.

(b) Administrative measures

14. Reply to the above questions in relation to any administrative provisional measures.

No specific provisions on IPRs.

6. Special Requirements Related to Border Measures

15. Indicate for which goods it is possible to apply for the suspension by the customs authorities of the release into free circulation, in particular whether these procedures are available also in respect of goods which involve infringements of intellectual property rights other than counterfeit trademark or pirated copyright goods as defined in the TRIPS Agreement (footnote to Article 51). Specify, together with relevant criteria, any imports excluded from the application of such procedures (such as goods from another member of a customs union, goods in transit or de minimis imports). Do the procedures apply to imports of goods put on the market in another country by or with the consent of the right holder and to goods destined for exportation?

Pursuant to paragraph 2 of the Regulation of the Council of Ministers (the Government) of 19 December 1997 it is possible to submit a written application for the protection of intellectual, commercial or industrial property rights. From the application of suspension by the customs authorities of the release into free circulation are excluded non domestic goods under transit procedure if the passage of goods terminates outside the Polish customs territory as well as goods exempted from duty on the ground of Article 190, paragraph 1, points 1 - 4 of the Customs Code, i.e. de minimis imports and goods usually treated as gifts of which the numbers and types do not denote trade purposes.

16. Provide a description of the main elements of the procedures relating to the suspension of the release of goods by customs authorities, in particular the competent authorities (Article 51), the requirements for an application (Article 52) and various requirements related to the duration of suspension (Article 55). How have Articles 53 (security or equivalent assurance), 56 (indemnification of the importer and of the owner of the goods) and 57 (right of inspection and information) been implemented?

Pursuant to paragraph 2 of the Regulation of the Council of Ministers of 19 December 1997, a written application for the protection of intellectual, commercial or industrial property rights shall be submitted to the President of the Main Customs Office by the right holder or a person authorized to make use of such a right, or a person authorized to act on behalf of the right holder. The applicant is obliged to provide the following documents: an authorized copy of a certificate of ownership of intellectual, commercial or industrial property rights; an authorization to request for the protection of intellectual, commercial or industrial property rights, if the applicant is not the owner of these rights; evidence to allow for the identification of goods which are subject to protection. The applicant may also attach to the application information concerning the import into the Polish customs territory of pirated goods or goods marked with a counterfeit trademark. The decision on the protection of intellectual, commercial or industrial property rights is issued, if the applicant delivers a security in the amount established on the level of ten per cent of assumed customs value of the goods, however not less than 5000 ECU. The security is established to cover costs related to customs custody of withheld goods by the time of ascribing to them the customs purpose and to secure claims of persons whose rights have been infringed in connection with withholding goods. If, within a period not exceeding ten working days after the applicant has been served notice of the suspension, the applicant does not provide customs authorities with an appropriate provisional order issued by the court to secure applicants' claims, the decision on withholding the goods concerned expires. On the ground of the decision issued by the President of the Main Customs Office, customs authorities which conduct customs inspection may suspend the goods of the release into free circulation. Pursuant to paragraph 7 of the Regulation of the Council of Ministers of 19 December 1997, a customs authority, to allow the protection of intellectual, commercial or industrial property rights, may provide the applicant, after a person introducing goods or removing them from the Polish customs territory is informed, with samples of withheld goods in order to conduct tests to determinate the characteristics of withheld goods.

17. Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost. How long is the validity of decisions by the competent authorities for the suspension of the release of goods into free circulation?

No application for the protection has been submitted yet (since the entry into force, as of 1 January 1998, of the Customs Code). Concerning the validity of a decision on protection of intellectual, commercial and industrial property rights, see the answer to question No. 16.

18. Are competent authorities required to act upon their own initiative and, if so, in what circumstances? Are there any special provisions applicable to ex officio action?

No, customs authorities are not allowed to act upon their own initiative. However, according to the new draft Regulation of the Council of Ministers (being at present under the legislation process) such an action will be permitted.

19. Describe the remedies that the competent authorities have the authority to order and any criteria regulating their use.

The provisions regulating civil and criminal procedures are not included in the Polish Customs Code. The right holder may claim his rights on the basis of the provisions of the following laws: (1) The Law on Trademarks of 31 January 1985; (2) The Law on Combating Unfair Competition of 16 April 1993; (3) The Copyrights and Neighbouring Rights Act of 4 February 1994.

7. Criminal Procedures

20. Specify the courts which have jurisdiction over criminal acts of infringement of IPRs.

District courts.

21. In respect of which infringements of which intellectual property rights are criminal procedures and penalties available?

In respect of five infringements (Articles 115-119 of the Polish Copyright Act): 115. Whoever usurps the authorship or misleads others as to the authorship of a whole or a part of another person's work or another person's artistic performance, shall be liable to imprisonment of up to two years, restriction of liberty or a fine. The same penalty shall be imposed on anyone who disseminates, without indicating the name or the pseudonym of the author, someone else's work in the original or derivative version, or publicly disfigures such work, artistic performance, phonogram, videogram or broadcast. Whoever, in order to gain material benefits in a manner other than that specified in paragraphs 1 or 2, infringes someone else's copyright or neighbouring rights specified in Articles 16, 17, 18, 86, 94/2, and Article 97, shall be liable to imprisonment of up to one year, restriction of liberty or a fine. 116. Whoever, without authorization or against its terms and conditions, disseminates someone else's work, artistic performance, phonogram, videogram or broadcast in the original or derivative version, shall be liable to imprisonment of up to two years, restriction of liberty or a fine. If the perpetrator commits the act specified in paragraph 1 above in order to gain material benefits, he shall be liable to imprisonment of up to three years. If the perpetrator makes the offence specified in paragraph 1 above a regular source of income or organises or manages a criminal activity, as specified in paragraph 1, he shall be liable to imprisonment from six months up to five years. If the perpetrator of the act specified in paragraph 1 above acts unintentionally, he shall be liable to imprisonment of up to one year, restriction of liberty or a fine. 117. Whoever, without authorization or against its conditions, fixes or reproduces someone else's work in the original or derivative version, artistic performance, phonogram, videogram or broadcast, and gives his consent to its dissemination shall be liable to imprisonment of up to two years, restriction of liberty or a fine. If the perpetrator makes the offence specified in paragraph 1 above a regular source of income or organises or manages a criminal activity, as specified in paragraph 1, he shall be liable to imprisonment of up to three years. 118. Whoever, in order to gain material benefit purchases, assists in the sale of, accepts or assists in concealing objects being carriers of the work, artistic performance, phonogram, videogram disseminated or reproduced without authorization or against its conditions, shall be liable to imprisonment of up to two years, restriction of liberty or a fine. If the perpetrator makes the crime specified in paragraph 1 above a permanent source of income, or organises or manages a criminal activity, as specified in paragraph 1, he shall be liable to imprisonment of up to three years. 119. Whoever makes impossible or hinders the exercise of the right to supervise the use of the work or artistic performance or denies information provided for Article 47, shall be liable to a fine.

22. Which public authorities are responsible for initiating criminal proceedings? Are they required to do this on their own initiative and/or in response to complaints?

Public prosecutor. He acts on his own initiative in most serious cases (Articles 116/3,117/2,118/2 of the Polish Copyright Act). In other cases an aggrieved party can directly bring a case to the court on the grounds of private accusation.

23. Do private persons have standing to initiate criminal proceedings and, if so, who?

An aggrieved party can directly bring his/her case to the court to initiate proceedings.

24. Specify, by category of IPR and type of infringement where necessary, the penalties and other remedies that may be imposed:

imprisonment;
monetary fines;
seizure, forfeiture and destruction of infringing goods and materials and implements for their production;
other.

Penalties that may be imposed are listed in the answer to question 21. Seizure and forfeiture of objects coming from the offence should be awarded in infringements described in Articles 115, 116, 117 and 118 of the Polish Copyright Act. In the same cases the court may order the seizure and forfeiture of objects used to commit the offence.

25. Describe provisions governing the length and any cost of proceedings. Provide any available data on the actual duration of proceedings and their cost, if any.

The public prosecutor should come to his conclusions in one month from the date of receiving a complaint, or two months in more complicated cases. There are no specific regulations on the length of court proceedings. There is no charge whatsoever on the plaintiff in the case of public prosecution. If an aggrieved party acts as a private prosecutor, he/she advances costs to the court; the costs however are negligible. An aggrieved party represented by an attorney will pay the fee to him. In practice, the main problems affecting the Polish justice system appear to be the time taken to process cases. No precise data is available.