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

22 October 2013

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.

This article is part of the DesignWrites Newsletter for October 2013.

View the full Newsletter (PDF)