SECURING CLAIMS BEFORE FILING AN INTELLECTUAL PROPERTY LAWSUIT
Intellectual property proceedings can take years. Also, the very process of preparing a lawsuit, securing all the evidence, determining more precisely the amount of damage on the part of the plaintiff, can take many weeks. During this time, the entity whose rights are being infringed is forced to tolerate the existence of an entity copying or otherwise infringing its rights. The maintenance of such a state of affairs can sometimes also lead to an increase in damage to the plaintiff, or make it more difficult to later assert rights. Polish law, however, provides for the possibility of stopping such infringing activity for a certain period of time, even before a final judgment is issued declaring that the plaintiff’s rights have been infringed. This institution is called injunctive relief for the duration of the legal proceedings.
The plaintiff, even before filing a lawsuit, may file an application with the same court in which he will file a lawsuit to secure the claim and regulate the rights and obligations of the parties for the duration of the legal proceedings from the relevant lawsuit.
In the application, it is necessary to substantiate the claim and the legal interest in granting security, that is, to indicate that the lack of security will prevent or seriously impede the execution of the judgment or otherwise prevent or seriously impede the achievement of the purpose of the proceedings in the case. The purpose of the proceedings will vary, depending on the circumstances of the particular case.
When issuing an order for injunctive relief in intellectual property cases, the court may, in particular, impose a prohibition on the other party from marketing certain goods, using a certain logo or name, or prohibiting a certain marketing campaign. However, these obligations should be in close connection with the scope of the facts of the case and the plaintiff’s claims under copyright law, industrial property law, or the law against unfair competition.
Importantly, injunctive relief is subject to time limits. The claimant seeking injunctive relief will have to meet the court-imposed deadline for filing a lawsuit. If, after the court’s order, the applicant fails to file a lawsuit by the deadline, the security lapses and all prohibitions cease to apply to the other party. In addition, the court should determine for how long the rights and obligations of the parties are regulated. The court may determine that the rights and obligations of the parties from the collateral are valid for a period of one year or for the entire duration of the proceedings triggered by the lawsuit.
ADVANTAGES OF A REQUEST FOR SECURITY OF CLAIMS
The low cost of such proceedings is one of its greatest advantages. This is because the court fee for a motion to secure a claim is only PLN 100, while in the case of a lawsuit, the fee will already be PLN 300 per claim.
Another advantage is the speed of this type of proceedings. Upon receipt of the application, the court does not examine the entire case, but only determines whether the applicant has a legal interest in securing the claim and whether he has made the claim plausible. At this stage, the court does not admit expert evidence or witness testimony. As a rule, the proceedings are limited to examining the correctness and legitimacy of the application itself.
SECURING CLAIMS IN GDANSK DISTRICT COURT
In one of the recently published rulings of the District Court in Gdansk, XVII Intellectual Property Division, file number XVII GWz 11/22, it was held that the defendant’s activity of offering collector’s items in low-volume series is of a special nature and justifies protection of the plaintiff’s claims. As a result, the court in this case dismissed the defendant’s complaint.
The proceedings concerned the production by the Gdansk mint of coins referring to a series of novels, short stories and computer games, the copyrights to which are held by a Polish company known for the games “The Witcher” and “Cyberpunk.” According to the company, the defendant, in violation of the company’s copyrights, created not coins, but figurines depicting the company’s characters, lands and trademarks.
The District Court in Gdansk granted security and prohibited the defendant from reproducing, marketing, exhibiting and publishing on the Internet the figurines, numismats, any designs, sketches and graphics depicting the above items from the games or novels specified by the court, as well as from using the plaintiff’s mark. These obligations were established by the court for the entire duration of the lawsuit.
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