Key amendments to Civil Code of Procedure alter interim injunction proceedings in trademark cases

On 23 March 2023 the Polish President, Andrzej Duda, accepted impactful amendments to the country’s Civil Code of Procedure, which are due to enter into force on 1 July of this year. It is imperative that trademark owners in Poland understand these changes as they change the regulations governing grants of interim protection to intellectual property – including those for trademarks.

Key changes

According to the amendments, Polish courts will now have to consider the likelihood of invalidation in other pending proceedings when assessing a claim’s plausibility. Interim injunction motions must include information on whether such proceedings have been or are currently being conducted – though applicants have the option of claiming that they have no knowledge of any investigation(s).

The relevance of this to interim injunction proceedings is not obvious; however, it would appear that the existence of an invalidation proceeding may decrease the chances of obtaining an interim injunction. However, in cases involving a pending invalidation proceeding, there is the risk that courts will a priori dismiss interim injunction motions due to the risk of an IP right being invalidated. In a worst-case scenario, the regulation could be used as a tool to block such injunctions altogether.  

Another amendment mandates a hearing for each applicant before a decision is made on their interim injunction motion. However, this would not apply to applications requiring an immediate decision or to those seeking forms of protection fully enforceable by a bailiff or involving the establishment of receivership over an enterprise, an agricultural holding or an establishment belonging to an enterprise. Pursuant to the bill justification, this amendment aims to prevent abuse of interim injunctions in disputes between entrepreneurs and is in line with the current practice of some courts’ IP divisions (eg, that of the Warsaw IP court).

The amended bill also addresses the urgency of interim injunctions. Under the new regulation, an interim injunction motion shall be subject to dismissal if it is filed more than six months after the rights holder became aware of the infringement of their exclusive right. Although this officially represents a new addition to Poland’s Civil Code of Procedure, previous verdicts from the country’s IP courts have taken a similar approach to urgency, evidenced by judgments refusing to issue interim injunctions in cases where applicants were aware of infringements and failed to act immediately. In this sense, the amendment confirms many courts’ pre-existing approaches to this issue.  

The final two amendments concern appeals to interim injunctions. These dictate that all appeals of interim injunctions issued by the court of first instance must be examined by the court of second instance, not as a horizontal appeal. Additionally, they make it possible to challenge a court of second instance’s initial decision on an interim injunction before another panel of that same court. However, complaints against a decision of the second court of instance issued after a complaint against the first court of instance’s decision has been examined are still prohibited.

We believe that these last two amendments will be viewed favourably, as horizontal complaints and the inability to complain about collateral initially issued by the court of second instance are often criticised by Polish practitioners.

Looking forward

The new amendments to the Code of Civil Procedure officially introduce into law some regulations (eg, those relating to urgency and hearings) that will formalise existing practices by Polish IP courts in interim injunction proceedings. Only time will tell how these changes will work in practice.