December is a time for reflection and summaries, but also for intense efforts to conclude pending cases. We are proud to share our successes in two complex proceedings in which our Clients reached satisfying settlement agreements in court mediation. Both cases involved multiple proceedings before civil courts, the EUIPO and Polish Patent Office. Moreover, in both cases our Clients reached settlement agreements with very high compensation.
Case 1: Market access obstruction by filing so-called DMCA (Digital Millennium Copyright Act) notices
The first case concerned a precedent case of market access obstruction constituting an act of unfair competition involving, inter alia, the filing of false DMCA (Digital Millennium Copyright Act) notices directly harming the plaintiff’s interests. The notices were addressed to Internet service providers and concerned allegedly infringement of the defendant’s rights, i.e. copyright, trade mark and design rights. The notices filed by the defendant resulted in the suspension or removal of websites, social media profiles or selected content posted online by our Client.
The Regional Court in Warsaw granted the interim injunction to our Client which forced the defendant to cease the aforementioned actions. The Court of Appeal cancelled aforementioned interim injunction, arguing that the cessation of unfair practices as a result of the order issued by the Regional Court in Warsaw granting interim injunction eliminated any further need to protect the plaintiff’s interest. The ruling was clearly wrong, but no appeal procedure was available. At the same time, the Court of Appeal noted that the defendant’s actions were likely to constitute acts of unfair competition.
As the proceedings continued, the parties decided on court mediation. The settlement agreement concluded therein not only obliged the defendant to cease DMCA filings, but also our Client was compensated tens of thousands of euros. It also terminated several proceedings before EUIPO and the Polish Patent Office.
Case 2: Copycat packaging and infringement of a reputable trade mark
The second case concerned so-called copycat packaging and the use of a trade mark confusingly similar to our Client’s reputed mark. These actions infringed both the principles of fair competition and the rights to a reputed trade mark.
In this case, the Regional Court in Warsaw granted the interim injunction in our Client’s favour, ordering the defendant to cease the disputed actions. Subsequently, on behalf of our Client, we filed a motion to summon the defendant to reveal information on the prices and number of infringing goods sold. The Regional Court in Warsaw issued an order obliging the defendant to provide written information to the extent indicated in the order.
The parties decided that the dispute should be mediated in court which resulted in signing a mutually satisfactory settlement agreement. As part of the settlement agreement, the defendant agreed to change the appearance of the packaging and to cease using the disputed trade mark. In addition, our Client received compensation of several hundred thousand PLN – an amount rarely encountered in cases involving compensation for infringement of intellectual property rights or for committing acts of unfair competition. The settlement ended overall three court disputes and six before the EUIPO and the Polish Patent Office.
Summary
Żuraw & Partners proudly represented the plaintiffs in both cases, contributing to the achievement of favourable outcomes. These successes also confirm that court mediation can be an effective way to resolve even the most complex disputes.