Forum-shopping in trade mark infringement cases?

12th December 2016

The question of where to bring a trade mark infringement claim – in the Court of the place where the infringer has their registered seat or where the infringing goods are marketed – is pivotal to every brand protection strategy. However, the recent practice of district Courts in Poland varies significantly and it is vital that rights holders get this right when seeking preliminary injunctions.

The question of where to bring a trade mark infringement claim – in the Court of the place where the infringer has their registered seat or where the infringing goods are marketed – is pivotal to every brand protection strategy. However, the recent practice of district Courts in Poland varies significantly and it is vital that rights holders get this right when seeking preliminary injunctions.

Under Polish law, a civil law case should generally be brought before the Court in the district where the defendant has its registered seat. However, for claims resulting from an unlawful act or a tort (such as trade mark infringement) claimants can also choose to have the case heard by a Court in the district where the act which resulted in harm was committed or where the consequences of that act occurred. In the case of goods marketed under an infringing trade mark, this has led to an interpretation that a claimant may freely choose the district Court in which it brings an action, regardless of where in the country the infringing goods were purchased, and regardless of where the infringer has their seat.

The interpretation has evolved to the extent that many Courts now find it sufficient to establish their jurisdiction on the basis that the claimant purchased the infringing goods in their district from any entity in the distribution chain, and not necessarily directly from the defendant. In practical terms this means that if a wholesaler has its seat in Krakow, sells infringing products to a retailer in Warsaw, who subsequently sells them to consumers, the rightsholder may choose to have the case heard by the district Court in either Kraków or in Warsaw, provided that the sale in Warsaw can be proven (e.g. with a receipt from the retailer). This approach is naturally very convenient for trade mark owners.

However, not all Courts share the above interpretation. According to some, such an approach leads to an abuse by the trade mark owner of its rights and in practice results in unjustified forum-shopping. In such instances the Court may declare that it does not have jurisdiction to hear the case and will transfer it to a district Court it considers competent (usually the Court of the seat of the defendant).

This poses a significant risk in particular in the context of preliminary injunction (PI) proceedings. If a district Court decides that it does not have jurisdiction to issue a PI decision, there is a high likelihood that the infringer will learn that a PI motion was filed before the decision is issued by the Court to which the case was transferred. This in turn may vitiate the surprise element of PI proceedings, potentially rendering the seizure of the infringing goods impossible because the infringer will have enough time to dispose of them.

Originally published in BrandWrites 7th Edition.