Many regard Poland as a jurisdiction where it is relatively difficult to seek damages in IP and fair competition infringement cases, mainly due to strict evidentiary requirements. Hence, in many cases, only non-monetary claims are pursued. Consequently, sanctions for infringers are often not severe enough.

Accordingly, it is worth keeping in mind that in most cases involving the infringement of intellectual property rights, one may also raise a claim for the so-called „atonement fee” under Article 18(1)(6) of the Polish Law on Combating Unfair Competition. The protection provided under this law can often supplement the protection provided for exclusive rights.

An atonement fee? What is it?

An entity injured by an act of unfair competition may demand for an appropriate sum of money to be awarded for a specific public purpose institution engaged in the promotion of Polish culture or the protection of national heritage if the act of unfair competition was culpable (the so-called atonement fee).  In its lawsuit, the claimant should indicate which specific institution engaged in the above-mentioned activity should receive the atonement fee and the amount of the claimed atonement fee to be paid by the culpable infringer.

What are the rules for determining the amount of the atonement fee?

It is assumed that the atonement fee should correspond to the extent of the actual violation or threat to the interests of the wronged entrepreneur, customer, or threat to public interest. However, the amount of damage is irrelevant to the amount of the atonement fee. The case law indicates that in determining the atonement fee, the following should be taken into account: the size and frequency of the violation, the circle of persons addressed with the act, the manner of the perpetrator’s actions, and the type of interests affected by the violation (Warsaw Administrative Court judgment of 11 December 2008, case I ACa 565/08, non-published; Szczecin Administrative Court judgment of 4 July 2007, case I ACa 400/07, LEX No. 516577).

Case law examples

Depending on the specific facts of the case, the amount of the atonement fee can vary significantly. The legislator has not established any bracket values for the amounts that could be claimed by an injured entrepreneur. The amounts awarded by Polish courts in individual cases can differ significantly. Here are some examples:

• PLN 500,000 awarded in the Warsaw Administrative Court judgment of 10 June 2009, in case I ACa 207/09, LEX no. 1641285, where the television company violated the provision of Article 16(1)(1) of the Polish Broadcasting Act, in connection with Article 16a(7) of the Broadcasting Act, by unreasonably and excessively broadcasting commercials in the breaks between different parts of the tv show episodes;
• PLN 50,000 awarded by the District Court in Warsaw in its judgment of 23 May 2023, in case XXII GW 292/21, LEX no. 3613732, where a company producing baby milk violated the provision of Article 16(1)(2) of the of the Polish Law on Combating Unfair Competition by using misleading advertising and deploying the advertising slogan „Nothing is closer to mom’s milk” when referring to the description of its product;
• PLN 25,000 awarded by the Supreme Court in its judgment of 28 March 2019, in case I CSK 26/18, LEX No. 2650329, where a media company violated Article 3(1) of the Polish Law on Combating Unfair Competition by giving its magazine a title referring to the name of the plaintiff’s website;
• PLN 10,000 awarded by the Regional Court in Warsaw in its judgment of 18 December 2018, in case XX GC 675/10, LEX no. 2680816, where an apparel manufacturer violated Article 3(1) of the Polish Law on Combating Unfair Competition by illegally using the plaintiff’s underwear designs;
• PLN 2,000 awarded in the Szczecin Administrative Court judgment of 4 July 2007, in case I ACa 400/07, LEX no. 516577, where a company producing separators violated Articles 16(1)(2), 16(3) and 14 of the Polish Law on Combating Unfair Competition by distributing among the plaintiff’s contractors and customers a letter entitled „Comparison of technical solutions of U. and S. separators,” in which the company disseminated unreliable analysis.

Cost of asserting the claim

In the case of non-monetary claims made under Article 18(1) of the Polish Law on Combating Unfair Competition, such as a demand to cease and desist illegal activity, a fixed court fee of PLN 300 applies (Article 26a(1)(2) of the Law on Court Fees in Civil Cases). Meanwhile, in the case of a demand for an award of an appropriate sum of money for a specific purpose, the court fee will amount to one fifth of the claim value (e.g., where the claim is for the atonement fee of PLN 30,000, the court fee will be PLN 1,500). Thus, the court fee on the claims for atonement fees may be higher than the total court fee for non-monetary claims. It may be the actual reason why right holders relatively rarely resort to such measures to protect their IP rights.

Summary

Monetary sanctions are regarded to be more severe for infringers. Atonement fees can therefore reinforce the effective protection of IP rights and supplement the portfolio of claims aimed at protecting the same. The atonement fee can also influence the infringer’s willingness to settle the claim. The money awarded by the court will also serve public purposes aimed to nurture cultural endeavours. In this way, the acute but often unquantifiable harm suffered by the right holder due to the unfair actions of the infringer can indirectly contribute to pro publico bono goals that will be in service to the general public.