Litigation cases, consultancy, opinions, contracts

Litigation and court proceedings

We have extensive many-year experience in handling litigation cases related to various industrial property rights.

We provide a full range of services related to representation of Clients, including:

  1. litigation proceedings before the Polish Patent Office (the PPO), the European Union Intellectual Property Office (the EUIPO) and the European Patent Office (the EPO), in particular with regard to:
    - notices of oppositions aimed at preventing registration of trademarks by the PPO and EUIPO,
    - requests for invalidation of granted exclusive rights (patents, protection rights for trademarks, registration rights in industrial designs etc.),
    - requests for revocation of protection rights for trademarks due to non-use;
  2. proceedings before administrative courts: the Voivodship Administrative Court (the VAC) in Warsaw (complaints against decisions of the Patent Office of the Republic of Poland or against decisions of the Polish Patent Office acting under litigation procedure) and the Supreme Administrative Court (cassation complaints against the VAC verdicts);
  3. proceedings before the EUIPO Boards of Appeals handling appeals against decisions of the EUIPO;
  4. civil proceedings before intellectual property courts examining in particular:
    - cases aimed at protecting intellectual property rights, e.g. by prohibiting infringements thereof,
    - cases aimed at combating unfair competition;
  5. criminal proceedings concerning counterfeit goods;
  6. litigation proceedings before authorities and courts abroad with the aid of well-proven and carefully selected foreign representatives;
  7. arbitration proceedings concerning Internet domain names.

At the pre-judicial stage we provide our Clients with comprehensive advice and consultations based on an in-depth analysis of technical and legal aspects of each case. Such an analysis makes it possible to determine possible benefits and risks related to the dispute and to develop a strategy of proceedings.

We are a keen advocate of alternative dispute resolutions. Thanks to careful structuring of cases based on their analysis performed by experienced patent attorneys, we have managed to successfully resolve many litigation cases through effective negotiations at the pre-judicial stage.

We specialise in the preparation of cease&desist letters warning the infringers against abuse of exclusive rights. We also successfully defend Clients who have been unjustly accused of infringing exclusive rights of their competitors, in particular by preparing responses to cease&desist letters and conducting negotiations with entities demanding cessation of infringement.

In the case of patent disputes, which usually lead to lengthy and costly litigation, we provide assistance in obtaining expert opinions in relevant fields of technology which may be decisive in the effective and faster resolution of the dispute.

Custom and criminal cases

We represent our clients in custom-related cases and criminal proceedings in the field of industrial and intellectual property, concerning mainly combating import and marketing of counterfeit goods.

We have vast experience in preparing national and EU requests for customs authorities to take actions related to the protection of intellectual property rights in Poland or in the European Union on the basis of relevant national and EU legislation.

We represent our Clients as the aggrieved parties and we cooperate with customs authorities, police and prosecutors in cases of seizure of counterfeit goods at the borders, as well as inside the country. In particular, we obtain information on detained goods and samples for our Clients, and we provide the authorities with the results of the Client’s analysis of the goods in order to distinguish the counterfeit products from the original ones.

We file motions for criminal prosecution in connection with the detention of counterfeit products or, alternatively, we prepare civil actions.

We provide our Clients with information on the development of criminal proceedings and, if necessary, we represent them as the aggrieved parties in such proceedings.

INTERNET DOMAINS AND DOMAIN DISPUTES

The Internet domain secures technical exclusivity for the use of a specific web address, and thus individualizes a company, enterprise or brand on the Internet.

Along with the development of information society and the growing share of the Internet in trade in goods and/or provision of services, the role of Internet domains as the main pillar of the company's operation and the most important components of the enterprise is constantly growing.

We offer comprehensive assistance in obtaining registrations and effecting renewals of validity of domains with the most popular extensions pl, com, eu, com.pl, as well as any other types of domains of our Clients’ interest.

We have extensive experience in handling disputes concerning Internet domains in arbitration proceedings before the Court of Arbitration for the Internet Domain Names at the Polish Chamber of Information Technology and Telecommunication, as well as in litigation proceedings before civil courts. We have successfully reclaimed for our Clients numerous domains infringing their previous trademarks or other exclusive rights.

Moreover, we offer professional help in a so-called “interception of colliding Internet domains”, as well as in negotiations with registrants of disputed domains.

Mediation and negotiations

Mediation is a process through which the conflicting parties can reach an agreement on the subject of the dispute. It is conducted in the presence of a qualified mediator who, while remaining impartial and neutral with regard to the subject matter of the dispute, ensures that the procedures of the conversation are maintained and provides the parties with conditions to reach an agreement.

The basis of mediation is its voluntary nature which applies throughout the process and allows the parties to withdraw from it at any stage.

Another principle of mediation is its confidentiality which applies to the mediator, the parties to the conflict and third parties involved in mediation. According to this principle, any information obtained during mediation may not be disclosed, even before a court, without the consent of the parties. Confidentiality is primarily aimed at creating an atmosphere of trust and security, allowing the parties to have an open discussion in order to reach an agreement.

A particular type of mediation is business mediation in the field of intellectual property.

We recommend out-of-court dispute resolutions and offer professional assistance of both in-house and external mediators prepared to conduct business cases in the IP field.

Combating unfair competition

An act of unfair competition is an act contrary to the law or principles of morality, or an act which infringes or poses a threat to the interests of another entrepreneur or client.

We offer legal assistance with regard to protection against actions infringing the principles of fair competition. We also take actions aimed at combating such practices.

Counselling services and preparation of opinions

We offer the following counselling services:

  • development of strategies for the protection of new products and solutions, including assistance with the choice of the most advantageous scope of substantive and territorial protection of the objects of industrial and intellectual property and of the most suitable procedures for applying for protection,
  • preparation of comprehensive legal advice and opinions concerning all the types of disputes concerning infringements of industrial property rights and of intellectual property rights, including copyrights, and combating unfair competition,
  • preparation of comprehensive expert opinions on the scope of protection resulting from patents, supplementary protection certificates, protective rights for utility models, registrations of industrial designs etc.,
  • preparation of comprehensive opinions and advice on practicing intellectual property rights, in particular on comprehensive strategies to protect the rights to the brand and its reputation, the shape/image of product packaging etc.,
  • preparation of opinions on the protection of trade secrets - know-how,
  • preparation of opinions on employee inventions,
  • preparation of analyses of portfolios of industrial and intellectual property rights.

For the purpose of national applications to be filed abroad, we secure professional assistance of well-proven foreign patent attorney firms.

Drafting and verification of contracts

We offer comprehensive assistance in the preparation and analysis of texts of agreements relating to the transfer of rights, license agreements, settlements, coexistence agreements, etc., as well as all documents relating to intellectual property rights, also in bilingual forms or in foreign languages.

We also offer services of verifying the texts of contracts and other documents, both in terms of the correctness of technical terminology and the correctness of legal terminology.

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