Supreme Court dispels doubts about statute of limitations for claims arising from industrial property infringements

There has been an ongoing debate over the last few years among Polish legal scholars about the point at which the limitation period begins for claims arising from the infringement of industrial property rights, with serious discrepancies having been observed in case law. However, a resolution adopted last year by the Polish Supreme Court (III CZP 30/20, 18 May 2021) appears to have resolved the issue.

Provision in question

Article 289(1) of the Polish Industrial Property Law (2000) states:

Claims for infringement of a patent become time-barred after three years. The limitations period starts running on the day on which the patent holder learned that his right has been infringed and of the person who has infringed the patent, separately for each infringement. However, in any case a claim becomes time-barred after five years from the day on which the patent was infringed.

Although this provision directly mentions patents, it applies to other industrial property rights as well, including trademarks.

Interpretive difficulty

The fact that an infringement does not always consist of a single, one-time action, but rather a series of related acts or in behaviour over a long period of time, has led some scholars and judges to identify a particular kind of infringement: the so-called 'continuous infringement'. According to this view, a continuous infringement (eg, putting a product branded with a registered trademark on the market for several years) should not be considered a series of separate infringements, but a single act. This has serious implications for calculating the limitation period, since "the day on which the patent was infringed" might be understood as either the day when the continuous infringement began, or the day that it ceased.

Facts of the case

This legal question arose when the Polish Supreme Court was considering a case concerning the infringement of Audi’s EU trademark. The defendant had been putting auto parts branded with the Audi logo on the market for years. If the defendant’s behaviour was to be considered a continuous infringement, and the limitation period was to start running the day the infringement began, then Audi’s claims were time-barred.

The Polish Supreme Court’s stance 

The Polish Supreme Court rejected the very idea of a continuous infringement. According to the resolution, a prolonged state of infringement should be treated as a sequence of separate infringements repeated on each successive day, regardless of what the infringement consists of. The limitation period is thus triggered separately for each day of the infringement.

Consequences for patent litigation in Poland

The operative part of the resolution specifically concerns the limitation period of a claim for infringement of the EU trademark; however, the remarks in the justification are of a general nature, and some of the case law and legal scholars’ views quoted there relate to patent infringement. Therefore, the resolution can be expected to affect the interpretation of Article 289(1) of the Polish Industrial Property Law.

This is good news for patent holders, but delays in raising claims against infringers are still inadvisable. One should bear in mind that knowledge of the infringement and of the identity of the infringer triggers the three-year limitation period.