The recent Polish practice has managed to resolve one of the most substantial issues, which, as a matter of fact, was ambiguous so far. Namely, to open up a possibility of raising a claim to information when protecting unregistered industrial designs.

Pursuant to the well-known to design enthusiasts art. 90.1  of Regulation No 6/2002 (CDR),  provisional measures, including protective measures, in respect of a Community design as may be available under the law of that State in respect of national design rights even if, under this Regulation, a Community design court of another Member State has jurisdiction as to the substance of the matter.

Basing on the above-quoted provision, the Regional Court of Warsaw stated that, having regard to the fact that the Act- Industrial Property Law does not stipulate protection of unregistered industrial designs, the closest possible grounds to be applied within the Polish legal system would be provided by the provisions of the Act on Combating Unfair Competition. It is because they create the basis for protection of a form of the product without a need for applying for registration whereas the protection derives from priority if use of the form of the product in the market. Besides, it is worth underlining that generally, a likelihood of confusion is the prerequisite of protection yet, whether the protection may be sought under the general clause without having to evidence the likelihood of confusion is a debatable issue.

However, the Polish Act on Combating Unfair Competition does not provide for a possibility of raising claims to information, i.e. a specific form of security of the claims (injunction) as stipulated in the aforementioned Act- Industrial Property Law. It allows for an undertaking to be made by the party infringing a right of intellectual property to give such types of information which are, unfortunately, enumerated and defined in the said Act.

In the discussed case, the plaintiff raised the claims to information with respect to unregistered Community industrial designs of shoes. By virtue of the decision dated October 28, 2013 (case No. Gwzt 17/13), the Regional Court of Warsaw, deeming that the closest possible right to the unregistered designs is created under the Polish law provisions on the grounds of the rules of unfair competition, dismissed the request since, in its view, the claim to information in the subject case is available only for the purposes of protecting registered industrial designs.

The decision of the Regional Court was appealed and the Court of Appeal, by a decision of February 14, 2014 (case No. I Acz 96/14) overruled it in the discussed scope. In the opinion of the Court of Appeal, CDR provisions, notably Art. 1, stipulate that industrial design referred to in Art. 90.1 CDR stands for both registered designs and unregistered designs. In addition, according to the definition of the design provided for in Art. 3(a) CDR, no differentiation between the registered designs and unregistered ones is made. Consequently, there are no grounds to assume that the law provisions which are pertinent to the protection of the form of the product on the base of  the rules of unfair competition are applicable to unregistered Community industrial designs.

Furthermore, the Court of Appeal drew an attention to the fact that the claim to information was introduced to the Industrial Property Law as a result of implementation of Directive  2004/48/EC on the enforcement of  intellectual property rights. In line with the norms stipulated in said Directive, the Member States are obliged to provide for relevant legislation regarding the right of information within all kinds of intellectual property rights, hence, it includes both registered and unregistered industrial designs.

The commented judgment, whose aim is to clarify the legal situation, undoubtedly strengthens the position of the producers.  They will certainly use such instruments as unregistered Community industrial designs and claims to information to a much greater extent, when defending their market position since - as the practice shows - using those tools allows for much more effective enforcement of financial claims.