POLAND Law and Practice Contributed by: Szymon Gogulski, Marek Oleksyn and Maciej Gil, Sołtysiński Kawecki & Szlęzak
Prerequisites to Obtain a Seizure To obtain a seizure within preliminary relief proceed - ings, a trade secret owner (claimant) must demon - strate: • that their claim is probable (corroborated); and • that they enjoy a “legal interest” in obtaining a preliminary relief. The claim is considered probable by the court examin - ing the preliminary relief motion if, prima facie, there is a significant chance of its existence. In turn, legal interest was defined in the CPC and is deemed to exist in those cases where the lack of a preliminary relief would prevent or significantly hinder the enforcement of a judgment issued or otherwise prevent or seriously hinder satisfying the purpose of the proceedings. Either party can appeal a preliminary relief deci - sion. An appeal against a decision of the court of first instance shall be heard by the court of second instance. An appeal against a decision of the court of second instance may be lodged with another panel of that court. Ex Parte vs Inter Partes Proceedings In intellectual property cases (including those con - cerning the protection of trade secrets), the court grants preliminary relief after hearing the defendant, unless an immediate decision is necessary. This inter partes examination rule does not apply to preliminary reliefs that are fully enforceable by a court bailiff – eg, where seizure of unauthorised products is involved. Carrying Out the Seizure A seizure is enforceable once the court has issued a preliminary relief decision and affixed this decision (acting ex officio) with an enforcement writ (enforce - ability clause). The seizure is performed by a court bailiff acting upon the applicant’s motion within a separate enforcement proceeding. 5.7 Obtaining Information and Evidence Evidence and Information Measures Available in Trade Secret Cases Three separate mechanisms exist to secure evidence and to disclose information, which transpose the rel -
However, the Polish Supreme Court decided in a rul - ing (25 September 2019, case III CSK 217/17) that where an employer claims that their former employee misappropriated the employer’s trade secrets, if the employer proves that such information constitutes a trade secret, the burden of proof moves to the former employee to prove that the disclosed information was not a trade secret or that the new business established by such a former employee was organised according to principles that are commonly known and applied by other entities conducting this type of business activ - ity, or was organised according to new principles – in comparison to the principles applied by the employ - er claiming protection – developed because of that employee’s knowledge and professional experience. IP-Specific Procedural Tools Polish laws have transposed the relevant measures for preserving evidence and the right of information under Directive 2004/48/EC of the European Par - liament and of the Council on the enforcement of intellectual property rights, dated 29 April 2004 (the “IP Enforcement Directive”). From July 2020, these measures have been set out in the CPC and form part of the specific rules envisaged exclusively for IP disputes (see 5.4 Jurisdiction of the Courts ). These procedural means can also be employed in a trade secrets lawsuit (see 5.7 Obtaining Information and Evidence ) and are intended to supplement the factual and evidential grounds of the main claim. Therefore, certain evidentiary and information‑related procedur - al measures may be sought by trade secret owners prior to the commencement of the main civil action. Additionally, in certain circumstances under the CPC, the court can apply some factual presumptions to the claimant’s benefit. 5.6 Seizure Mechanisms Seizure of Products Within Preliminary Relief Proceedings Seizing accused products is available for a trade secret owner as a method of enforcing a preliminary relief, if granted by court. A motion for a preliminary relief aimed at seizing accused products can be filed either before or during the main infringement litigation. Consequently, the seizure of products is also available before a final judgment in the case.
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