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04 April 2016
Division of industrial design system
Supreme Court judgment
In a February 18 2016 judgment (case II CSK 282/15), the Supreme Court redefined the principles of protection of industrial designs in Poland. The court deliberately deviated from well-established case law and decided that the courts should not address the question of infringement of a Polish industrial design until its validity has been decided in administrative proceedings.
Excepting the Community designs court, Polish common courts cannot assess a design's validity. This domain is reserved for the Polish Patent Office and administrative courts. If an action for infringement of a design right is initiated, the defendant cannot therefore make a counterclaim and demand invalidation of the design right in the same proceedings. Instead, if the defendant believes that the statutory requirements for granting the right have not been met, it should file a proper motion for invalidation with the Patent Office.
The Code of Civil Procedure grants the court the right to suspend proceedings if the result depends on the outcome of administrative proceedings. However, the courts have rarely suspended infringement proceedings when the defendant has challenged the validity of an industrial design at the Patent Office. It has generally been accepted that infringement and validity proceedings are independent and may take place simultaneously. The reasoning behind this was a legal assumption that a design right was valid as long as its validity was not denied in administrative proceedings. Therefore, if a design is invalidated after the court has ruled on the infringement, the defendant must question the judgment in the subsequent enforcement proceedings.
The Supreme Court's February 18 2016 decision concerned the infringement of an industrial design for a bunk bed that had been successful in Poland. Shortly after the bunk bed was released in 2008, a similar model appeared on the market. Both bunk beds were marketed primarily on a popular Polish auction website. The manufacturer of the first bunk bed applied for protection of its industrial design and sued the other manufacturer for design infringement.
The defendant argued that any similarities between the designs were limited to constructional elements. The defendant also filed a motion for invalidation of the industrial design in question, arguing that it lacked novelty and individual character.
The Regional Court and the Court of Appeal confirmed that design right infringement and unfair competition had occurred, although the validity proceedings were still ongoing. The defendant filed a cassation appeal to the Supreme Court and indicated that the validity of the industrial design right had never been verified, since the Polish industrial design system (as in the majority of other jurisdictions) merely requires the Patent Office to verify the application formally, without checking whether the design is new and has individual character.
The Supreme Court agreed with the defendant's arguments, although they were inconsistent with established case law. According to the court, the shift from its previous position was required to allow the industrial design to be verified and avoid situations where the question of infringement was decided on a potentially invalid right. The Supreme Court therefore stated that the infringement proceedings should be suspended until the design's validity was not in question. The court also indicated that the suspension would allow the defendant to exercise its constitutional right to present necessary arguments and defences in the course of the dispute.
There are arguments for and against suspending infringement proceedings until the validity of an industrial design has been decided. Since there is no material examination of a design application, numerous registered designs may exist that should not be legally protected. On the other hand, the examination of the validity of an industrial design right may take longer than the infringement proceedings. From a practical point of view, such a suspension could delay proceedings by a couple of years.
The recent Supreme Court judgment illustrates one of the problems of the existing Polish industrial property system, which the legislature should address. Following the judgment, some commentators have proposed granting Polish common courts the right to assess the validity of a design in infringement proceedings. This would also allow for the harmonisation of the Polish and European industrial design systems. However, for now, the possibility of suspending Polish industrial design infringement proceedings should be considered before initiating legal action.
For further information on this topic please contact Szymon Gogulski or Mikolaj Skowronek at Soltysinski Kawecki & Szlezak by email (firstname.lastname@example.org or email@example.com). The Soltysinski Kawecki & Szlezak website can be accessed at www.skslegal.pl.
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