Trade Secrets 2022 Comparisons

Law on Counteracting Unfair Competition

The protection of trade secrets is substantially governed by provisions of the Unfair Competition Law, dated 16 April 1993 (UCL), implementing Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets), dated 8 June 2016, against their unlawful acquisition, use and disclosure (Trade Secrets Directive). The UCL regulates the prerequisites to protect information as a trade secret, the scope of trade secret protection, exceptions from protection, available remedies and criminal liability.

Other Legal Acts

Specific provisions regarding the protection of trade secrets are also included in, for example:

• the Civil Code (23 April 1964) – the protection of information disclosed during negotiations;
• the Civil Procedure Code (17 November 1964) (CPC) – the protection of trade secrets in civil proceedings;
• the Labour Code (26 June 1974) – the confidentiality obligations of employees and representatives of trade unions;
• Industrial Property Law (30 June 2000) – license agreements for the use of inventions constituting trade secrets for which no application for a patent grant has been filed; and
• the Law on Access to Public Information (6 September 2001) – the limitation of the right to public information constituting trade secrets.

Poland is also a party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the relevant provisions of which are directly effective in the national legal system.

Under Polish law, any technical, technological, organisational, or other information of economic value which, either as a body or in the precise configuration and assembly of its components, is not generally known to or easily accessible by persons usually dealing with that type of information, may be potentially protected as a trade secret. That also includes negative information, eg, regarding unsuccessful trials and tests. Any trivial information or information generally known to experts in a given field is excluded from protection.

Case law recognises the following examples of types of information protectable as a trade secret:

• the description of a manufacturing process or a quality-control system;
• analyses of the presence of mineral deposits;
• sales forecasts;
• data showing production and sales volumes as well as sources of supply and clients;
• information on the publishing plans of a publishing house; and
• information related to a company’s organisational structure or employees’ salaries.

Under the UCL, the following prerequisites must be jointly met to protect a given piece of information as a trade secret:

• such information must be confidential, ie, not easily accessible to persons that normally deal with the kind of information in question, either as a body or in the precise configuration and assembly of its components;
• such information must have a commercial value; and
• such information must be subject to appropriate (reasonable) efforts to maintain its confidentiality.

One of the prerequisites to apply the trade secrets regime is taking appropriate steps to keep the information confidential (see 1.4 Elements of Trade Secret Protection). Such steps include both factual and legal actions, for example:

• providing information on a “need-to-know” basis;
• password protection;
• file access control;
• encryption measures;
• the obligation to wear badges in a workplace;

• appropriate staff training to raise awareness of the trade secrets’ issues;
• executing non-disclosure agreements;
• notices in documents and correspondence.

In some cases, an implied intent to keep information confidential may be sufficient to apply trade secrets protection.

As a general rule, the extent of the necessary steps depends on a particular case’s circumstances, including a relevant enterprise’s size and the relevant market sector.

If an employer takes appropriate steps to keep the information confidential, in particular by executing non-disclosure agreements with employees (see 1.5 Reasonable Measures) and informing an employee of the confidential nature of the disclosed information, the disclosure of such information to the employee does not affect its protection as a trade secret (if other prerequisites for the protection are met, see 1.4 Elements of Trade Secret Protection).

Regarding the use of employees’ general knowledge and skills, see 4.1 Pre-existing Skills and Expertise.

Regarding the burden of proof in a trial against a former employee, see 5.5 Initial Pleading Standards.

Independent discovery and reverse engineering constitute legitimate means of acquiring a trade secret. Therefore, as a rule, the trade secrets protection regime may not be invoked to prohibit the use of information acquired in that manner. However, an item/product subject to reverse engineering should be in the public domain or in the lawful possession of the person acquiring the information and whose right to acquire the information is not restricted (eg, under a licence agreement).

Because of independent discovery or reverse engineering, the same piece of information may be protected as a trade secret for the benefit of two or more independent entities. The public disclosure of such information by one person results in the loss of protection for all independent trade secret owners.

There are no specific provisions regulating the protection of computer software or technology as trade secrets. The Law on Copyrights and Neighbouring Rights (4 February 1994) regulates the limits of permitted analysing, testing and decompiling a computer program from the copyright perspective. Copyright protection of a computer program may overlap with trade secrets protection (see 1.12 Overlapping IP Rights).

Term of Protection

Trade secrets protection lasts as long as the prerequisites for its protection are met (see 1.4 Elements of Trade Secret Protection), in particular, as long as it is not easily accessible to persons from the relevant industry. There is no maximum term of protection.

Consequences of Disclosure

Any kind of disclosure (accidental or controlled) may result in the loss of protection if such information becomes easily accessible to persons from the relevant industry. However, if the recipient of the trade secret (even if unauthorised) keeps such information confidential, such disclosure will not affect the protection for benefit of the rightful trade secret owner.

In typical situations, a trade secret may be disclosed, eg, through publication in a scientific journal or at a trade fair.

General Rules

Trade secrets may be licensed to third parties similarly to items of other IP rights (eg, inventions or copyrightable works). Although only licence agreements for the use of inventions constituting trade secrets are specifically addressed in provisions of law, these rules may in principle also be applied by analogy to other trade secrets licences.

Trade secrets licence agreements can be:

• non-exclusive or exclusive;
• full (ie the licensee may use the trade secrets within the same scope as the licensor) or limited;
• active (where the licensor is obliged to provide the licensee with the information and technical experience needed to use the subject matter of the license) or passive;
• concluded for a defined or undefined period.

To maintain the protection of the licensed trade secrets, the licensee should be obliged to undertake reasonable measures to keep its confidentiality (see 1.5 Reasonable Measures).

Sublicensing

A trade secret licence agreement may be sublicensed only with the licensor’s consent. In turn, the admissibility of granting further sublicences to use the trade secret is debatable.

Form

There are different views on whether the requirement of a written form (wet-ink or qualified electronic signatures) also applies to trade secrets licences. Given the subject matter of such types of licence agreement and for precautionary reasons, a written form of a licence agreement is highly recommended.

Assignment of Rights

The right to trade secrets may be also assigned to a third party, eg, under a sale agreement or as an in-kind contribution etc. In such a case, as a rule, the assignor loses their right to use the assigned trade secrets.

According to prevailing views, the right to trade secrets may be considered an IP right. However, compared to other IP rights, the right to trade secrets has certain specific features:

• a given piece of information may be protected as an independent trade secret of several entities (eg, as a result of independent discovery or reverse engineering); 
• it has no maximum term of protection (eg, similar to trademarks but unlike patents or economic copyrights); and
• there are no protection fees or registration requirements (unlike for some industrial property rights).

It is possible for a claimant to assert trade secret rights in combination with other types of IP rights, especially with economic copyrights (eg, to documents including a description of a given trade secret), as well as patent rights (eg, where a manufacturing process is protected partially as trade secrets and partially by patented inventions).

Contractual Regime

Regardless of the UCL’s provisions, the disclosure/misappropriation of trade secrets may constitute a breach of a contract (eg, non-disclosure or licence agreements). In such a case, general rules on liability for non-performance or improper performance of a contract apply.

Claims against Non-entrepreneurs

As a rule, the UCL regime applies only to entrepreneurs (defined as natural and legal persons and organisational units having no legal personality who, by undertaking profit-gaining or professional activity, even if secondary in nature, participate in economic activity). However, both case law and legal doctrine accept application of provisions of the UCL on trade secrets protection also in relation to non-entrepreneurs. The Trade Secrets Directive and the TRIPS agreement additionally support such interpretation and approach. Claims regarding a non-entrepreneur’s misappropriation of trade secrets (in particular, employees and former employees) may be also based on a different legal basis, in particular, on a contractual regime (if there is an appropriate confidentiality undertaking in place) or general tort regime (under the Civil Code).

Additionally, each employee is required to keep confidential any information the disclosure of which could expose the employer to damage under the Labour Code’s provisions.

Tortious Interference with a Contract

Inducing an employee or any other person to breach a contractual confidentiality obligation with a third party constitutes a separate act of unfair competition, specifically defined in the UCL, and may result in an injunction or financial claims against the perpetrator.

The UCL provides for criminal liability for the misappropriation of trade secrets by any person, who:

• in breach of their obligation towards an entrepreneur, discloses to another person or uses information constituting a trade secret in their own economic activity and causes substantial damage to an entrepreneur;
• having illegally acquired information constituting a trade secret, discloses it to other persons or uses it in their own economic activity; or
• discloses or uses information constituting a trade secret which they acquired while participating in a hearing or in other court proceedings concerning claims for an act of unfair competition related to the infringement of a right to a trade secret, or through access to the files of such proceedings if, in such proceedings, the hearing was closed to the public.

Additionally, the Criminal Code (6 June 1997) provides for the criminal liability of anyone who, in violation of provisions of law or an obligation, accepted, discloses or uses information learned in connection with the function or work performed, or public, social, economic or scientific activity pursued. Also, acquiring illegal access to information constitutes a criminal offence, notably:

• acquiring information not intended for a perpetrator without authorisation by opening a sealed letter or connecting to a telecommunication network or by breaching/bypassing electronic, magnetic, IT or other special protection;
• accessing an IT system (or any part of an IT system) without authorisation;
• installing or using any bugging, visual or other equipment or software to acquire information which a perpetrator is not authorised to access; or
• disclosing information acquired in the manner described above to a third party.

Possible penalties include a fine (from PLN100 to PLN1,080,000), the restriction of liberty or the deprivation of liberty for up to two years. In some exceptional cases (eg, recidivism), the penalties may be increased.

A trade secret owner may pursue both civil and criminal claims.

Jurisdiction – Brussels I bis Regulation

One may bring a claim before a Polish court based on the misappropriation of trade secrets (infringement of the right to trade secrets) that took place in another country if Polish courts have jurisdiction, in particular under Regulation (EU) No 1215/2012 of the European Parliament and of the Council on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (12 December 2012) (the Brussels I bis Regulation), in particular, if the defendant is domiciled in Poland or if the infringement of rights to trade secrets takes place simultaneously in several states (including Poland), eg, on the internet.

In relation to non-EU states, jurisdiction may also be determined under international conventions or the CPC.

Applicable Law – the Rome II Regulation

The law applicable to acts of unfair competition should be determined under Regulation (EC) No 864/2007 of the European Parliament and of the Council on the law applicable to non-contractual obligations (11 July 2007) (the Rome II Regulation). The European Commission indicated in the Explanatory Memorandum to the Rome II Regulation that the disclosure of trade secrets and industrial espionage should be considered acts of unfair competition for applying the Rome II Regulation (and not as an infringement of IP rights).

The applicable substantive law may also be determined under the provisions of international conventions with non-EU states which include conflict-of-law rules.

Applicable law – Acts of Unfair Competition Infringing the Interests of a Specific Competitor

For acts of unfair competition which exclusively affect the interests of a specific competitor (including the misappropriation of trade secrets), the law of the country in which the damage occurs applies irrespective of:

• the country in which the event giving rise to the damage occurred; and
• the country or countries in which the indirect consequences of that event occur.

However, where the person claimed to be liable and the person sustaining damage both have their habitual residence in the same country at the time the damage occurs, the law of that country applies. Where it is clear from all the case’s circumstances that the act of unfair competition is manifestly more closely connected with a country other than that indicated above, the law of that other country applies. A manifestly closer connection with another country might be based, in particular, on a pre-existing relationship between the parties (eg, a pre-existing non-disclosure agreement) that is closely connected with the act of unfair competition in question.

Applicable law – Acts of Unfair Competition Infringing the Interests of Several Competitors (Market-Related Infringements)

In some cases, it may be assumed that the misappropriation of trade secrets affects the interests of several competitors on a given market (eg, because of the introduction into trade of the infringing products). In such situations, the law of the country where competitive relationships are, or are likely to be affected, applies.

Applicable Law – the “Mosaic Approach”

In both the cases described above (ie, the acts infringing the interests of one or several competitors), applying the Rome II Regulation’s provisions to multi-jurisdictional acts of unfair competition may often result in the “mosaic approach”, ie, the necessity to assess the consequences of the infringement of the right to trade secrets in each country based on that country’s substantive law. Applying several national laws in proceedings before one court may constitute significant practical difficulty in trade secret litigation.

Applicable Law – Claims Based on a Breach of Contract (the Rome I Regulation)

Claims related to trade secrets may also result from the breach of a contract (eg, a non-disclosure or licence agreement). In such a case, the applicable law should be determined under Regulation (EC) No 593/2008 of the European Parliament and of the Council on the law applicable to contractual obligations (17 June 2008) (Rome I Regulation). As a general rule, a contract is governed by the law chosen by the parties. If the parties to the contract have not chosen the applicable law, then the contract is governed by the law of the country where the party required to effect the characteristic performance of the contract has its habitual residence. Determining such a party may be problematic, especially for non-disclosure agreements. Depending on the facts of a given case, other rules of determining the applicable law included in the Rome I Regulation may also apply.

Again, in this case, the applicable law may also be determined under the provisions of international conventions with non-EU states.

Under the UCL, each event of disclosure, use or acquiring another party’s information constituting a trade secret may be considered an act of unfair competition giving rise to the claims provided for in the UCL (see section 7), in particular, if it took place in the circumstances described below.

A trade secret owner does not have to demonstrate that its trade secret was actually used.

Acquisition

Acquisition of information constituting a trade secret is an act of unfair competition, in particular, when it:

• takes place without the consent of the party authorised to use the information or dispose of it; and
• is a result of unauthorised access, appropriation, copying of documents, items, materials, substances, electronic files including the information or enabling inference of its contents.

Use and Disclosure

Use or disclosure of information constituting a trade secret is an act of unfair competition, in particular, when it:

• takes place without the consent of the party authorised to use or dispose of it; and
• infringes the obligation limiting its use or disclosure resulting from the applicable laws, legal action or another act, or if it was effected by a person who acquired the information by performing an act of unfair competition.

Good Faith, Due Diligence

The disclosure, use or acquisition of information constituting a trade secret is also an act of unfair competition if, on the date of its disclosure, use or acquisition, the person performing such actions:

• had knowledge; or
• with observance of due diligence, could have had knowledge

about the fact that the information was acquired directly or indirectly from the party that used or disclosed it illegally.

Also, the use of information being a trade secret comprised of producing, offering, introducing to trading, as well as importing, exporting and storing of goods for that purpose, constitutes unfair competition, if the person performing such activities:

• had knowledge; or
• with observance of due diligence, could have had knowledge

about the fact that the properties of the goods, including aesthetic or functional, the process of their manufacture, or sales, were shaped to a significant extent as a consequence of the illegal use, disclosure or acquisition of a trade secret.

The above rules assume the good faith of the person disclosing, using or acquiring trade secrets. The trade secret owner has to demonstrate that such actions were performed in bad faith.

Further Exceptions

The disclosure, use or acquisition of information constituting a trade secret is not an act of unfair competition if it occurred:

• to protect a justified legally protected interest;
• under the exercise of freedom of expression;
• to disclose irregularities, infringements or actions in breach of the law for the protection of public interest; or
• regarding representatives of employees in connection with their functions determined by law, if necessary for the proper performance of these functions.

In exceptional cases, it may be possible to claim that although the disclosure, use or acquisition takes place without the trade secret owner’s consent, such actions:

• were not contrary to “good commercial practices”; or
• did not, in fact, threaten or infringe the trade secrets owner’s interest and, consequently, did not constitute an act of unfair competition.

See also 1.7 Independent Discovery and 4.1 Pre-existing Skills and Expertise.

For trade secret claims under the UCL against employees or ex-employees, see 1.13 Other Legal Theories. Claims regarding an employee’s misappropriation of trade secrets may be also based on a different legal basis, in particular, under the Labour Code’s provisions, stipulating that each employee is required to keep confidential any information the disclosure of which could expose the employer to damage.

Additionally, the claims against employees and former employees may be based under:

• a contractual regime (if there is an appropriate confidentiality undertaking in place);
• a general tort regime (under the Civil Code); or
• the provisions of TRIPS directly.

See also 4.1 Pre-existing Skills and Expertise.

Rules regarding the use, disclosure, (co-)ownership or licensing of trade secrets are usually included in shareholders agreements, investment agreements or other joint-venture agreements. There are no Polish law provisions pertaining specifically to trade secrets in joint-venture relations.

Most activities usually considered to be industrial espionage are covered by the UCL’s penal and civil law provisions (see 1.14 Criminal Liability and 2.1 The Definition of Misappropriation). There are no provisions of Polish law defining “industrial espionage”.

There are no recognised “best practices” or guidelines pertaining to the protection of trade secrets. In practice, entrepreneurs implement various factual and legal measures to protect the confidentiality of their trade secrets as described in 1.5 Reasonable Measures.

Exit interviews are not common in Poland. However, if a given employee had access to sensitive information, a prudent entrepreneur may request that such an employee provide written confidentiality assurances.

As a rule, the general knowledge, experience and skills an employee acquires during employment may not be considered trade secrets. The distinction between trade secrets and such general knowledge, experience and skills is ambiguous and may cause some difficulties in practice.

Polish law does not recognise the doctrine of “inevitable disclosure” and gives priority to the freedom of employment. As a rule, employees may use their pre-existing skills and expertise for the benefit of a new employer. Employers may protect their interest, in that respect, by entering into additional non-competition agreements with employees. However, maintaining a non-competition agreement after terminating employment involves paying the employee at least a quarter of their previous salary.

As regards hiring employees from competitors, risks related to potential trade secret misappropriation claims may be mitigated, eg, by enquiring about new employee’s obligations towards the former employer or informing the new employee in writing that they are not allowed to use any information acquired from the previous employer other than general knowledge, experience and skills acquired during previous employment. It is also worth including this type of arrangement in employment agreements.

Lawsuit

A standard civil litigation alleging the theft of a trade secret commences with filing a lawsuit. This procedural brief is subject to general formal requirements under the CPC for lawsuits in civil cases (see 5.5 Initial Pleading Standards).

Prerequisites or Preliminary Steps before a Lawsuit Is Filed

Depending on the defendant’s identity, a trade secret lawsuit may additionally fall under specific procedural rules envisaged for litigation in commercial matters, eg, a pre-litigation settlement attempt by the claimant. Although such a settlement attempt does not form a prerequisite to initiate a civil lawsuit, a claimant failing to make such an attempt may result in the court shifting all costs of the litigation onto the claimant, regardless of the case’s final outcome. Also, in commercial litigation, the claimant is obliged to produce all statements and evidence already in the lawsuit. Such statements and evidence produced at a later stage are ignored unless the claimant substantiates that their adducing was not possible or that the need to introduce them arose later. This means that, subject to the comments in 5.6 Seizure Mechanisms, all relevant evidence material available should be provided while filing the lawsuit.

General Rule

As trade secret claims form part of “property-related claims”, they are subject to the statute of limitations. As a general rule, under the UCL, trade secret infringement claims become time-barred after three years. This statute of limitation period begins separately for each infringement.

Claims to Redress Damage

For damage caused because of the unlawful disclosure, use and acquisition of trade secrets, claims for redress of damage become time-barred after three years from the date on which the harmed party (claimant) learned, or could have learned by acting diligently, about the damage and the person obliged to repair it. However, this period cannot be longer than ten years from the date on which the event giving rise to the damage occurred.

There is also a specific statute of limitation rule for those cases where a breach of a trade secret constitutes a crime or a misdemeanour. In such a case, the limitation period for the claim for damages may not end later than twenty years from the date of the offence.

Cessation Claims in Trade Secret Infringements Having a Continuous Character

The UCL or other laws do not expressly provide how the statute of limitations should be calculated for a cessation claim where trade secret infringement has a continuous character, eg, where products manufactured with the unlawful use of a claimant’s trade secret are continuously offered for sale online. While different approaches are presented in case law and doctrine, according to the prevailing position the three-year statute of limitations of a cessation claim starts to run separately on each day in which infringement occurs.

The latter approach corresponds with the recent decision of the Polish Supreme Court, issued regarding an analogous point of law under EU trademark enforcement in Poland (18 May 2021, case III CZP 30/20). Although this Supreme Court decision was based on trademark law, due to its written reasoning and arguments presented, its conclusions may potentially be more widely applied by common courts in trade secrets infringement cases. 

Initiating a lawsuit requires filing a pleading (see 5.5 Initial Pleading Standards) which is subject to a court fee. The court fee amount depends on the types of claims sought and is determined under the relevant statutory rules (see 5.11 Cost of Litigation).

IP Courts Having Jurisdiction Over Trade Secrets Disputes

From July 2020, civil lawsuits concerning the unlawful disclosure, use and acquisition of trade secrets are examined by specialised IP courts. These courts have exclusive jurisdiction to examine all – broadly defined – IP matters which comprise all unfair competition cases, including trade secrets disputes. The specialised IP courts operate as separate divisions (chambers) of regional courts in the first instance and of courts of appeal as second-instance courts. There are five first-instance IP courts, namely Warsaw, Poznan, Gdansk, Katowice and Lublin, having the jurisdiction to examine trade secrets disputes and two second-instance IP courts in Warsaw and Poznan. Additionally, the Regional Court in Warsaw has exclusive jurisdiction to resolve all matters pertaining to the infringement of technical trade secrets in the first instance.

Special Rules in IP, including Trade Secrets and Infringement Proceedings

Court proceedings concerning the infringement of a trade secret are conducted under certain specific rules envisaged exclusively for IP (including trade secrets) disputes as set out in the CPC. These specific procedural rules were enacted together with the establishment of specialised IP courts in July 2020, and include:

• the mandatory representation of litigating parties by attorneys-at-law or by patent attorneys unless the dispute value is below PLN20,000 or the court releases a party (upon request or ex officio) from such professional representation due to low complexity of the case;
• the primacy of these IP-specific procedural rules over other specific CPC regulations which may also apply to IP litigation in the case of inconsistencies; and
• the competence of IP courts regarding qualifying a given matter as an IP case – which is binding on other courts.

Initial Pleading – General Requirements

A lawsuit in trade secrets litigation is subject to the general requirements set out in the CPC for civil cases. Under the CPC, a lawsuit must comply with the general requirements envisaged for each procedural brief and should additionally contain:

• a precisely specified request, and in cases of property rights, also the indication of the dispute value unless the subject of the case is a specified amount of money;
• an indication of a date when the respective claim became due;
• a presentation of the facts on which the claimant forms their claim and, if necessary, also justifying the jurisdiction of the court; and
• information on whether the parties have attempted mediation or other out-of-court resolution regarding the dispute, and if such attempts have not been made, an explanation of the reasons for failing to do so.

Irrespectively, a lawsuit may include additional motions concerning, for example, the following.

• An interim injunction.
• Conducting a hearing in the absence of a claimant.
• The preparation of the hearing, in particular, requests for:
1. summoning the witnesses and experts indicated by the claimant to a hearing;
2. making an inspection or ordering the defendant to deliver the document in their possession to the hearing; and
3. the need to take evidence or the subject of the inspection.

Burden of Proof

According to the general rule for the burden of proof, the claimant must prove the infringement by all possible means of evidence. Consequently, in principle, a trade secret owner (claimant) cannot allege facts “on information and belief” before it has concrete evidence of misappropriation.

However, in a recent ruling (25 September 2019, case III CSK 217/17), the Polish Supreme Court decided that where an employer claims that their former employee misappropriated the employer’s trade secrets, if the employer proves that such information constitutes a trade secret, the burden of proof moves to the former employee to prove that the disclosed information was not a trade secret or that the new business established by such a former employee was organised according to principles that are commonly known and applied by other entities conducting this type of business activity, or was organised according to new principles – in comparison to the principles applied by the employer claiming protection – developed because of that employee’s knowledge and professional experience.

IP-Specific Procedural Tools

Polish laws have transposed the relevant measures for preserving evidence and the right of information under Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights, dated 29 April 2004 (IP Enforcement Directive). From July 2020, these measures have been set out in the CPC and form part of the specific rules envisaged exclusively for IP disputes (see 5.4 Jurisdiction of the Courts). These procedural means can also form part of a lawsuit in trade secret disputes (see 5.7 Obtaining Information and Evidence) and are intended to supplement the factual and evidential grounds of the main claim. Therefore, some of this procedural evidence and information-related means can also be sought by trade secrets owners before initiating the main civil case. Additionally, in certain circumstances under the CPC, the court can apply some factual presumptions to the claimant’s benefit.

Seizure of Products within Preliminary Relief Proceedings

Seizing accused products is available for a trade secret owner as a method of enforcing a preliminary relief, if granted by court. A motion for a preliminary relief aimed at seizing accused products can be filed either before or during the main infringement litigation. Consequently, the seizure of products is also available before a final judgment in the case.

Prerequisites to Obtain a Seizure

To obtain a seizure within preliminary relief proceedings, a trade secret owner (claimant) must demonstrate:

• that their claim is probable (corroborated); and
• that they enjoy a “legal interest” in obtaining a preliminary relief.

The claim is considered probable by the court examining the preliminary relief motion if, prima facie, there is a significant chance of its existence. In turn, legal interest was defined in the CPC and is deemed to exist in those cases where the lack of a preliminary relief would prevent or significantly hinder the enforcement of a judgment issued or otherwise prevent or seriously hinder satisfying the purpose of the proceedings.

Ex Parte vs Inter Partes Proceedings

The court may proceed either ex parte at a closed court sitting (in camera) or serve a preliminary relief motion on a defendant, requesting them to comment on the motion and schedule a court hearing. As the surprise effect is essential in a preliminary relief aimed at seizing accused products, the courts usually examine such motions ex parte.

Carrying Out the Seizure

A seizure is enforceable upon the court issuing a preliminary relief decision and affixing this decision (acting ex officio) with an enforcement writ (enforceability clause). The seizure is performed by a court bailiff acting upon the applicant’s motion within a separate enforcement proceeding. Either party can appeal a preliminary relief decision and the appeal is examined by the same court which decided on the preliminary relief motion. However, the court examines the appeal in a three-person composition.

Evidence and Information Measures Available in Trade Secret Cases

Three separate mechanisms exist to secure evidence and to disclose information which transpose the relevant measures set out under the IP Enforcement Directive:

• a motion to secure the means of evidence;
• a motion to hand over or disclose evidence; or
• a motion for information.

Motion to Secure the Means of Evidence

This motion can be filed by a trade secret owner to any person (including the defendant) who possesses the relevant evidence or who can enable such evidence to be secured.

Such a motion can be filed either:

• before commencing; or
• during the main proceedings,

until the case is closed in the first instance.

In the first scenario, a lawsuit must be filed within a specified court deadline. The deadline is between two weeks and one month as of the date the decision on securing the means of evidence becomes final.

This measure aims, in principle, to prevent a situation where achieving the purpose of the evidentiary part of the main proceedings would become impossible or be seriously hindered.

The court issues a decision on securing the means of evidence if the applicant shows the following two prerequisites:

• their claim is probable (corroborated); and
• they enjoy a “legal interest” in securing the means of evidence.

The CPC provides a specific definition of a legal interest in securing the means of evidence which explains and reflects the purpose of these proceedings.

The motion to secure the means of evidence should be examined by the court immediately at a closed-court sitting. The method of securing the means of evidence is shaped broadly in the CPC and can be freely determined by the court. Such methods may include, for example, the collection of goods, materials, tools used for production or distribution, documents and the preparation of a detailed description of these items, combined, if necessary, with taking their samples. The court’s decision issued in the first instance is enforced by a court bailiff. This can be appealed to the court of appeals.

Motion to Hand Over or Disclose the Means of Evidence

This motion can be filed only against the defendant in the main proceedings. These proceedings aim to oblige the defendant to disclose or hand over the means of evidence being in the defendant’s possession, in particular, banking, financial or commercial documents, to disclose and prove the facts. The CPC expressly limits the scope of the application of this measure to cases concerning infringement of an IP right. As a trade secret should be understood as part of IP (see 1.11 What Differentiates Trade Secrets from Other IP Rights), this measure should also be available to trade secrets owners.

To effectively request that the means of evidence be handed over or disclosed, the trade secret owner (claimant) must make probable the circumstances justifying the application, including the circumstances which show that the defendant indeed possesses the means of evidence requested. The defendant has the right to reply and comment on such a motion, and the court may examine the motion and issue a decision, either at a closed sitting or during a court hearing. The court’s decision issued in the first instance is enforceable. It can be appealed to the court of appeals.

Motion for Information

This motion can be filed by the trade secret owner to any person (including the defendant) who possesses or has access to the relevant information.

Similarly, while the CPC limits the scope of this measure’s application to cases concerning an IP right infringement, for the reasons discussed in 1.11 What Differentiates Trade Secrets from Other IP Rights, this measure should also be available to trade secrets owners.

Such a motion can be filed either before the main proceedings have commenced or during the proceedings until the case is closed in the first instance. In the first scenario, a main infringement case must be initiated within a deadline not longer than one month as of the performance of the information disclosure decision by its addressee, ie, the defendant or other person who was obliged to disclose information.

This motion for information can pertain to:

• the names and addresses of producers, manufacturers, distributors, suppliers and other previous holders from or for whom goods were purchased or sold, services were used or provided, as well as expected wholesalers and retailers of these goods or services;
• information on the quantity of produced, manufactured, shipped, received or ordered goods or services rendered, as well as prices received; and
• other information necessary to prove the amount of the claim in particularly justified circumstances.

The trade secret owner (applicant) must:

• show the probability of the circumstances showing the infringement;
• set out the scope of information sought;
• demonstrate why the addressee has the requested information; and
• show that the information is needed to establish the source or value of the infringement.

The addressee of the request may respond to the motion within the time set by the court, but not shorter than two weeks. The court’s decision issued in the first instance is enforceable. It can be appealed to the court of appeals. The obligation to provide information is performed by the addressee (obliged party) in writing or in electronic form.

The CPC provides some procedural rules aimed at maintaining the secrecy of the trade secrets at issue during litigation while the case is pending. These are summarised below.

• Only the litigating parties may view the case files and receive certified copies, copies or excerpts from these files.
• At a litigating party’s request, the court orders a closed-door sitting , when trade secrets may be disclosed. In such a case, only the following persons may be present in the court room: the parties, the interveners, their statutory representatives and proxies, the prosecutor and persons of trust, two on each side.

On the other hand, while deciding on the motions concerning evidence and information (see 5.7 Obtaining Information and Evidence), the court must take into account the protection of the addressee’s confidential information. This general rule is discussed more precisely in the CPC for each relevant evidence-securing or information-disclosure motion.

There are different formal and merit defences available in trade secret litigation which, depending on the case background, may include the following:

• the lack of the legal protection of a trade secret due to the lack of or insufficient measures adopted by the claimant to maintain confidentiality (see section 1.5);
• no infringement due to an independent discovery/production or observation, research, disassembly or testing, if the relevant prerequisites set out in the UCL can be shown by the defendant;
• no infringement as a result of, eg, protecting a legitimate interest, as part of exercising the freedom of expression or revealing irregularities, misconduct or violating the law to protect the public interest;
• a statute of limitations plea;
• in exceptional cases, showing that the claimant’s interest has not been infringed or threatened; and
• in specific cases, the claimant’s too-long acquiescence of the defendant's unauthorised activities on the market (the venire contra factum proprium plea).

There is no specific “dispositive motion” procedure available in Polish civil procedure. However, in turn, the CPC provides for some procedural measures which, to some extent, perform a similar function to a dispositive motion, for example:

• based on statements and attachments as well as notorious facts and facts known by the court ex officio, if the court perceives the case to be obviously ungrounded, it can dismiss the lawsuit at a closed sitting without even serving the lawsuit on the defendant;
• the defendant can bring the res iudicata argument and request that the court reject the lawsuit without examining the case on its merit; or
• by recognising the essence of a claim to be justified, the court may issue a preliminary judgment as to the principle only and, with respect to the disputed amount of a claim, proceed further with the trial.

Types of Costs Involved

Costs connected with trade secrets litigation in Poland consist of the costs of court proceedings and attorney fees.

The final litigation costs (including attorney fees and proceedings costs) depend on the complexity of the case, number of hearings scheduled by the court in each instance, the number of pleadings prepared and filed by the parties and the possible engagement of a court-appointed expert (eg, where technical know-how is involved), etc.

A trade secret owner is obliged to incur a court fee while initiating a lawsuit. The amount of the court fee depends on type of claims claimed:

• each non-financial claim (eg, cessation claim) is subject to a fixed court fee in the amount of approximately EUR65; and
• a financial claim is subject to a 5% court fee calculated based on the amount claimed (where such an amount is higher than approximately EUR4,200).

If a litigating party requests a court action which involves costs (eg, appointing experts, hearing witnesses who are entitled to the reimbursement of travel expenses and wage equivalents, translating documents), that party is usually required to make an advance payment on the appropriate costs. The costs are finally accounted for in a judgment on the merits in each instance and allocated according to the proportion in which they fall on each party.

Litigation Financing

There are still no specific statutory rules in Poland concerning litigation or arbitration financing (third-party funding). Although a dispute-financing mechanism is beginning to emerge in Poland, there is still no information about such cases in disputes before common courts regarding trade secrets.

Under the CPC, trade secret trials are decided by a judge. The litigating parties cannot choose to have their case decided by a jury.

General

Trade secret litigation starts with filing a lawsuit (see 5.5 Initial Pleading Standards). Once the court checks the formal aspects of the lawsuit, its copy is served on the defendant who is granted a deadline (not shorter than two weeks) to file their reply. Depending on the judge’s decision, the court may subsequently either:

• schedule a “preparatory sitting” that aims to resolve the dispute without the need for further meetings, especially a hearing or – alternatively – drawing up a detailed plan for the hearing with the participation of the parties;
• order the parties to exchange subsequent procedural briefs, specifying the order in which the briefs should be submitted, the dates of filing and the circumstances to be clarified; or
• schedule a hearing.

Hearing

After calling the case, the claimant and then the defendant present their demands and conclusions verbally and present their statements and supporting evidence. The court’s role during the court hearing is, by asking the parties questions, to ensure that the parties provide or supplement their statements or evidence and provide the explanations necessary to duly establish the factual basis of their rights or claims. In the same way, the court seeks to clarify the essential circumstances of the case. The hearing also includes evidentiary actions and the consideration of its results. After closing the hearing, the court issues its judgment in a given instance. There are usually two to five court hearing dates set by the court in the first instance and one hearing date in the second instance in trade secret disputes.

Witness Testimony

Because of the nature of trade secrets disputes, witness testimony forms a substantial part of evidentiary proceedings. However, it should be noted that, in commercial litigations, the CPC substantially limits witness testimony and the cases are examined mostly based on documents. Consequently, in commercial litigations concerning trade secrets, the claimant should prepare a strong documentary evidence file and (if needed) be able to effectively use the mechanisms discussed in 5.7 Obtaining Information and Evidence.

Time of Proceedings

Trade secrets proceedings usually last approximately one to two years in the first instance and approximately one year in the second instance.

Court-Appointed Experts

Under the CPC, the court can appoint an expert in cases where “special information” is required, eg, specific biotech, chemical, construction or financial knowledge necessary for the court to assess a claim. The court may decide to appoint an expert after hearing both parties’ positions. The claimants usually apply to the court to appoint an expert in their lawsuit. Defendants may also apply for a court-appointed expert in reply to a lawsuit. An expert’s role is not to decide on the infringement but rather to equip the judge with the specific information necessary to examine the case and render a judgment.

Court Expert’s Opinion

Court-appointed experts prepare their opinions in writing. The court can subsequently summon experts to supplement or clarify their opinions verbally (during court hearings) or in writing. The parties can also comment on the expert’s opinion.

Private Experts

Private experts’ opinions are also allowed in trade secrets disputes to additionally substantiate the litigating party’s position and arguments. However, such private experts cannot substitute for the role of court-appointed experts.

General

Preliminary injunction relief is available before the final judgment in the case is given. See the preliminary injunction requirements in 5.6 Seizure Mechanisms.

In the decision on the preliminary injunctive relief the court may order the cessation of unauthorised actions by the defendant for the duration of the main infringement case.

A motion for a preliminary injunction relief can be filed either before or during the main infringement litigation.

Security Deposit

The court can make an enforcement of its preliminary injunction decision conditional on the claimant submitting a security deposit (a bond) to secure the claims which the defendant (or a third party) may possibly have vis-à-vis the claimant as a result of such preliminary injunction enforcement. While deciding on a bond, the court can act either ex officio or upon the defendant’s request. The bond requirement may, in some cases, work as a cooling tool against excessively shaped preliminary injunctions, especially in those matters whose outcome is not obvious.

Types of Damages Available

The financial claims available for a successful claimant are one or both of the following:

• recovery by the defendant of unduly obtained benefits based on general civil law rules; and/or
• the redress of damage calculated based on either general civil law rules or, alternatively, on a fictitious licence fee.

Recovery of Unduly Obtained Benefits

Although case law, commentators and practitioners are not uniform regarding the approach and grounds to calculate the amount of unduly obtained benefits, the prevailing views are to base these claims either on the infringer’s relevant income or profit (income less cost). No faulty behaviour of the infringer needs to be shown for this financial claim.

Redress of Damage

To effectively seek compensation based on general civil law terms, the claimant should demonstrate:

• trade secret infringement by the defendant;
• damage caused to the claimant;
• a causal link between this infringement and the damage caused; and
• the defendant’s fault which may also include negligence.

In turn, if a fictitious license is sought, the claimant should demonstrate:

• the trade secret infringement by the defendant;
• the amount of the fictitious remuneration due to the claim should a licence be granted to the defendant; and
• the defendant’s fault which may also include negligence.

Punitive Damages

Punitive damages are not available under the CPC.

Character of a Permanent Injunction

Under Polish procedural laws, a permanent injunction should be understood as a final and binding judgment issued by the court on the merits considered.

Infringing Products

For trade secrets infringement claims, upon a claimant’s request, the court may also decide in its judgment on products, their packaging, advertising materials and other items directly related to infringement. In particular, the court may order their destruction or include them towards compensation. As long as the questioned products have already been put on the market by the infringer before the final and binding judgment (or, if granted earlier, a preliminary injunction), a recall of the products is not possible as long as the ownership of the questioned products has already been transferred by the defendant to third parties, eg, to wholesalers or final customers.

Limiting Employees

Limiting an employee’s subsequent employment to protect trade secrets is possible only within a non-compete arrangement after employment and against remuneration due to the employee during the non-compete period. A court judgment can only prohibit specific actions which infringe trade secrets but may not limit defendants in choosing their workplace.

Duration

Final and binding judgments in trade secret infringement cases are not limited in time. However, they may possibly cease to bind if a trade secret becomes publicly available.

If the claimant is successful in trade secret litigation, they can request that the defendant reimburse the costs of asserting their rights. Such costs of legal proceedings also include attorney fees. However, the recovery of attorneys’ fees is possible only within the limits set out in law. This limit is capped at a relatively low level. A claimant’s motion is necessary to be reimbursed with costs of legal proceedings, including attorneys’ fees.

Reimbursement of the costs of legal proceedings includes:

• the court fee incurred by the party;
• the costs of travel to the court of the party or its representative; and
• the equivalent of earnings lost as a result of appearing in court as well as mediation costs (if conducted).

Such costs also include attorneys’ fees (see 7.4 Attorneys' Fees). If the claims were only partially confirmed by the court, the costs are either mutually offset or shared proportionately. A claimant’s motion is necessary to be reimbursed with costs of legal proceedings, including attorneys’ fees.

Trade secret litigation is of a two-instance nature. Both the claimant and defendant can file an appeal against the first-instance judgment – within the scope unfavourable to the party concerned. An appeal to the court of appeals (either the Court of Appeals in Warsaw or Poznań) needs to be filed through the court that issued the judgment in the first instance (a relevant regional IP court) within two weeks from the date of the delivery of the judgment with the written reasoning to the party. The first-instance court prepares the written reasoning of its judgment upon the party's request to be served with such – filed within one week from the date of delivery of the judgment.

It is also possible to appeal against a number of types of decisions issued by the court throughout the first-instance proceedings which are not a judgment on the merits. In those cases, a separate procedural measure is applied, ie, a complaint against the court’s decision. If there are court decisions which cannot be challenged by means of a formal complaint, the party can still question the decision in their appeal against a first-instance judgment if such court’s decisions had an impact on the merit assessment of the case.

There is an extraordinary measure against a final and binding judgment of a court of appeals, ie, a cassation complaint to the Supreme Court. However, the prerequisites allowing such a cassation complaint to be filed are narrow and are interpreted strictly.

Under the CPC, the courts of appeal in Poland review both factual and legal issues and re-examine the case anew. The court of appeals are not bound by the allegations of a violation by the first-instance court of substantive law as set out in the appeal. However, the court of appeals is bound by the allegations of a violation of procedural laws. Within the limits of the appeal, the court of appeals takes into account ex officio the possible nullity of the proceedings. The appeal is decided both on paper (a written appeal and the reply to an appeal) and the parties’ arguments presented during a court hearing. A court of appeals may examine the case at a closed sitting (in camera) if it is not necessary to conduct a hearing, unless any of the parties applied for a hearing.

Both the lawsuit and the appeal can be withdrawn by the relevant party at the appeal phase of the proceedings. A withdrawal of the lawsuit may require the claimant to sign a waiver of claims.

Crimes related to trade secrets appropriation are prosecuted at the request of the injured party. After the request is filed, proceedings are conducted ex officio by the public prosecutor. The request to prosecute may only be withdrawn with the public prosecutor’s consent.

Regarding the description of respective crimes and possible penalties, please see 1.14 Criminal Liability.

A suspect in criminal proceedings may invoke the same exceptions to protect trade secrets as in civil litigation (see 2.1 The Definition of Misappropriation) or claim that given information does not constitute a trade secret (see 1.4 Elements of Trade Secret Protection). See also 5.9 Defending against Allegations of Misappropriation.

There is no alternative dispute resolution forum envisaged for settling disputes over a trade secret infringement. However, the litigating parties may settle the case within mediation proceedings regulated by the CPC or during the hearing in the main case. During the court proceedings parties may also settle out of court or within mediation proceedings envisaged by the CPC.

If a trade secret dispute is based on a breach of contract (eg, an NDA), the parties may have potential disputes arising from such an agreement resolved through ADR, including arbitration.