The main argument in the appeal was based on the circumstances, namely the prevention of the enforcement of rights arising from the disputed design, which could ultimately lead to other entities being able to introduce products containing the disputed design onto the market, which in turn could negatively affect consumer perception and damage the company’s reputation. In its decision of March 19, 2015 (VIII SA/WA 1275/14), the Regional Administrative Court in Warsaw refused to suspend the execution of the appealed decision.
Disagreeing with the issued decision, the company filed an appeal with the Supreme Administrative Court, arguing that despite the existence of grounds under Art. 61 § 3 of the Code of Administrative Procedure, the court of first instance refused to suspend the execution of the appealed decision of the Patent Office.
In its decision of June 25, 2015 (II GZ 297/15), the Supreme Administrative Court overturned the appealed decision and referred the application for suspension of the execution of the appealed decision for re-examination by the Regional Administrative Court in Warsaw. The court stated that the court of first instance had not addressed the grounds indicated by the company under Art. 61 § 3 of the Code of Administrative Procedure and had wrongly held that the appellant had not demonstrated what damages and difficult-to-reverse consequences it might suffer if the execution of the appealed decision was not suspended.
In the re-examination of the case, the Regional Administrative Court in Warsaw, in its decision of September 24, 2015, suspended the execution of the appealed decision of the Patent Office of the Republic of Poland, agreeing with the appellant’s position and the fact that the conditions under Art. 61 § 3 of the Code of Administrative Procedure were met.
This time, disagreeing with the above decision, the other party to the proceedings filed an appeal and requested the annulment of the appealed decision.
In its decision of January 13, 2016 (II GZ 913/15), the Supreme Administrative Court again overturned the appealed decision and referred the application for suspension for re-examination by the Regional Administrative Court in Warsaw. In its decision, the Supreme Administrative Court provided the Regional Administrative Court with a number of guidelines to be taken into account when examining the aforementioned application. In the re-examination of the case, the Regional Administrative Court in Warsaw stated that the appealed decision of the Patent Office of the Republic of Poland is enforceable, and therefore the application for suspension should be examined. In doctrine and case law, it is stated that “by the concept of the execution of an administrative act, one should understand the causing, in a voluntary or coercive manner, of such a state of affairs that is consistent with the decision contained in the act” (see J. P. Tarno, Law on proceedings before administrative courts, Commentary, Warsaw 2006, p. 186, decision of the Supreme Administrative Court of January 31, 2006, file no. II FZ 882/05). Enforceability therefore applies to binding acts that establish for their addressees obligations to behave in a certain way or prohibitions on certain behavior, acts on the basis of which a specific entity simultaneously obtains a right and, by virtue of which, certain obligations are imposed on it, and acts on the basis of which one entity is obliged to do something, and the other is only entitled (T. Woś (in: T. Woś (ed.), H. Knysiak-Molczyk, M. Romańska, Law on proceedings before administrative courts. Commentary, Warsaw 2006, p. 295 et seq.).
Subsequently, the court indicated that, according to legal doctrine, the annulment of the registration of an industrial design by the Patent Office of the Republic of Poland involves the complete recognition that the protection never existed due to the failure to meet the requirements necessary to obtain protection (see Industrial Property Law, Private Law System, Volume 14B, edited by R. Skubisz, C.H. Beck, 2012). Consequently, the effects of annulling such a decision are retroactive, i.e., from the moment the exclusive right was granted, which ultimately means that it should be assumed that the protective right was never granted. Pursuant to Article 61 § 3 of the Act on Administrative Procedure, the court may, upon the applicant’s request, issue a decision suspending the execution of the act or action in whole or in part if there is a risk of causing significant damage or irreversible consequences. Therefore, in accordance with case law and, among other things, the guidelines set out in the Recommendation of the Committee of Ministers of the Council of Europe of September 13, 1989/89/8, the court is obliged to examine the interests of both the applicant and the other parties to the proceedings.
Applying the above to the present case, the Administrative Court indicated that, although the challenged decision of the Patent Office of the Republic of Poland does not obligate the appellant to take any specific action, nor does it grant it any specific rights, its issuance results in the deprivation of the company of the protection arising from the protective right to the disputed industrial design. Consequently, if the challenged decision is not suspended, the appellant may be deprived of the possibility of protecting the disputed design, which may ultimately lead to a situation in which other entities will freely introduce products onto the market using the same packaging as that covered by the disputed design. In view of the above, the position of the appellant, a limited liability company, should be considered justified, and it should be stated that it has demonstrated that the suspension of the decision of the Patent Office of the Republic of Poland is justified. In light of the above, the Administrative Court in Warsaw, by its decision of June 23, 2016 (VIII SA/Wa 1275/14), suspended the execution of the challenged decision of the authority.
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