Information access claim of art. 2861(1)(3) of Industrial Property Law contrary to the Constitution

The Constitutional Tribunal in its judgment of 6 December 2018 stated that art. 286¹(1)(3) of Industrial Property Law is contrary to the Constitution.

The challenged provision made it possible to secure a claim in an industrial property infringement case also before bringing an action by obliging someone other than the infringer to provide information necessary to pursue the claim, i.e. information on the origin and distribution networks of goods and services infringing the patent, additional protection right or registration right.

Claim security could be granted if infringement of protection rights was highly probable or if it was found that the person possessing the goods that infringe industrial property rights or using services that infringe these rights, provides services used in infringing activities or was indicated by the infringer as a person participating in the production, manufacture or distribution of goods or the provision of such services.

The above actions had to also be aimed at obtaining, directly or indirectly, a profit or other economic advantage but it did not include the actions of consumers in good faith.

The Constitutional Tribunal came to the conclusion that the provision disproportionately infringed the freedom of economic activity of a person obliged to disclose trade information (business secrets) and did not provide him with adequate guarantees to protect against the misuse by the entitled to obtain information falling within the scope of business secrets. In addition, the challenged regulation did not allow to moderate information obligations.

For the Tribunal on the on hand the irreversibility of this measure was significant and on the other the possibility of misuses at the stage of safeguard proceedings when it was not yet determined whether there was an infringement of industrial property rights.

The measure of such intensity was not, in the Tribunal’s opinion, necessary for the protection of other constitutional values.

Due to non-compliance with art. 22 in conjunction with art. 31(2) of the Constitution of the Republic of Poland, the provision lost its force on 10 December 2018.

• judgment of the Constitutional Tribunal of 6 December 2018, file no SK 19/16