Poland: Criminal protection of designs is not so easy in Poland

1 October 2013, Warsaw

A design owner may enforce their design rights in Poland via both civil and criminal proceedings. The decision whether to enforce using civil or criminal proceedings (or both) depends on the circumstances of the case and the design owner’s ultimate goals. However, in practice, many design owners turn to civil proceedings over criminal proceedings for the following reasons.

  • Civil proceedings are heard by a specialist court, wheras criminal proceedings are conducted by the prosecutor’s office/court which is not specialised in design right protection;
  • It is easier to seek damages in civil proceedings; and
  • Provided the design owner has the proper evidence, the chances of success are higher in civil proceedings.

The greatest obstacle in pursuing criminal proceedings is proving that the design owner has suffered serious harm as a result of the design (registered or unregistered) of a product being copied and that the copied product has been used in a way that misleads customers, so as to constitute a criminal offence under the Act on Combating of Unfair Competition of 16 April 1993.

Although by law the burden of proof is on the criminal authorities, in fact it is the design owner who must show that serious harm has been caused to its operations, as it is best placed to know how much damage it has suffered.

‘Serious harm’ is construed broadly and can be:

  • actual harm;
  • loss of profits that the design holder would have achieved if the offender had not copied and/or put the copycat on the market; and/or
  • damage to the design holder’s reputation.

In order to successfully prove serious harm the design owner often has to disclose confidential financial information. The need to do so often discourages design owners from seeking to rely on criminal proceedings. Consequently, it may be more effective and less time-consuming to protect designs by way of civil, and not criminal, proceedings in Poland.

Originally published in DesignWrites 2nd Edition.