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Expatriating from the United States to the Cayman Islands does not relieve you of your duty to report income to the Internal Revenue Service, or IRS. While your location may have changed, your tax obligations have not. If you’re a US resident living in the Cayman Islands, or if you’re planning on becoming one anytime soon, it is essential to comply with IRS tax reporting requirements if you wish to avoid costly penalties and, in cases of willful noncompliance, criminal prosecution by the Department of Justice (DOJ).
As a CPA who specializes in handling international tax matters, Ted Kleinman brings more than 30 years of experience to every client he works with, no matter how complex the issue. Whether you’re worried about resolving tax matters like failure to file, failure to pay, or failure to disclose foreign accounts held in the Cayman Islands, need to get your financial records in order in preparation for your move, or simply want to make sure you’re taking full advantage of the credits and deductions that may be available to you, US Tax Help is here to guide and assist you.
To start discussing how Ted Kleinman CPA can help you in a private consultation, call US Tax Help today at (541) 923-0903 . Remember, deadlines are critical where the IRS is concerned — don’t wait another day to get started.
Do Expats in the Cayman Islands Have to File Taxes?
The short answer to this question is yes, you are required to file (and pay) tax as a US expat in the Cayman Islands.
Failure to file tax return or to pay tax (26 U.S. Code § 6651) – Up to 25% of unpaid tax or 100% of unpaid tax, depending on the circumstances.
Willful failure to file return, supply information, or pay tax (26 U.S. Code § 7203) – Up to $25,000 in fines and up to one to five years in prison. The fine increases to $100,000 for corporations.
Attempt to evade or defeat tax (26 U.S. Code § 7201) – Up to $100,000 in fines and up to five years in prison. The fines increases to $500,000 for corporations.
The good news is that the IRS extends the filing deadline for US residents abroad. While persons living in the US must normally file by April 15, residents abroad qualify for two extensions: an initial extension until June 15, as well as a second extension, requested via Form 4868 (Application for Automatic Extension of Time to File U.S. Individual Income Tax Return), which lasts until October 15. If you’re worried about catching up on back taxes, now is the time to start exploring your payment options. Ted will help you negotiate with the IRS to get your matter resolved.
Holders of foreign accounts are subject to some of the IRS’ most rigorous reporting requirements — and the penalties for noncompliance can be devastating. As numerous court cases in recent years have made amply clear, the IRS’ Criminal Investigation Division (CID) will not hesitate to refer a case to the DOJ for prosecution if willful tax evasion or other acts of actual or attempted tax fraud are discovered.
One of the major requirements that might apply to you is filing an FBAR (Report of Foreign Bank and Financial Accounts). Filing an FBAR is mandatory if you are a US person — a term which includes US citizens, US residents, trusts, estates, and business entities — and if the aggregate value of your foreign bank accounts or foreign financial accounts exceeded a total of $10,000 at any point during the year, however briefly.
If this describes you, you must file an FBAR online, using FinCEN Report 114, via the BSA E-Filing System. If the IRS detects a non-willful violation, you may be penalized with a maximum fine of $10,000 (per violation). For willful violations, the penalty climbs to $100,000, or 50% of the balance in the account at the time the violation(s) occurred.
Along with filing an FBAR, you may also be required to file Form 8938 (Statement of Specified Foreign Financial Assets). Note that FBAR and Form 8938 are separate requirements and do not replace or substitute each other.
As we’ve already established, the criminal penalties imposed for various tax crimes are severe, typically involving tens or even hundreds of thousands of dollars in fines in addition to months or years in prison. However, even if you’d had issues with noncompliance in the past, you can help to minimize the likelihood of criminal prosecution by participating in an IRS program called “Streamlined” that is subject to its own unique set of requirements and considerations. Ted will work with a qualified attorney to help you understand whether the Streamlined Program could be right for you.
The Streamlined Offshore Procedure does eliminate all penalties, but participants are still subject to unpaid taxes plus interest. The Streamlined Domestic Procedure also includes a a 5% penalty on the foreign bank balances for the year in the covered period. However, these fines are often dramatically lower than those which would otherwise be imposed, which, in combination with the chance to obtain relief from federal prosecution, makes the Streamlined an attractive option for many taxpayers in the Cayman Islands.
Once the IRS begins investigating you, it’s already too late: you will not be permitted to participate in the Streamlined! Therefore, it is critical to take prompt action while the option remains open to you. To start talking about your tax matter with Ted in a completely confidential consultation, call US Tax Help right away at (541) 923-0903.

matches:
§ 6651
§ 7203
in fine
§ 7201
in fine
in fine


Art.1.1x.f f "Landscape planning" means strong forward-looking action to enhance, restore or create landscapes.
Art.2.1x Subject to the provisions contained in Article 15, this Convention applies to the entire territory of the Parties and covers natural, rural, urban and peri-urban areas. It includes land, inland water and marine areas. It concerns landscapes that might be considered outstanding as well as everyday or degraded landscapes.
Art.3.1x The aims of this Convention are to promote landscape protection, management and planning, and to organise European co-operation on landscape issues.
Art.5.1x.d d to integrate landscape into its regional and town planning policies and in its cultural, environmental, agricultural, social and economic policies, as well as in any other policies with possible direct or indirect impact on landscape.
Art.6.A.1x Each Party undertakes to increase awareness among the civil society, private organisations, and public authorities of the value of landscapes, their role and changes to them.
Art.6.B.1x.c c school and university courses which, in the relevant subject areas, address the values attaching to landscapes and the issues raised by their protection, management and planning.
Art.6.D.1x Each Party undertakes to define landscape quality objectives for the landscapes identified and assessed, after public consultation in accordance with Article 5.c.
Art.6.E.1x To put landscape policies into effect, each Party undertakes to introduce instruments aimed at protecting, managing and/or planning the landscape.
Art.7.1x Parties undertake to co-operate in the consideration of the landscape dimension of international policies and programmes, and to recommend, where relevant, the inclusion in them of landscape considerations.
Art.9.1x The Parties shall encourage transfrontier co-operation on local and regional level and, wherever necessary, prepare and implement joint landscape programmes.
Art.13.3 3 In respect of any signatory State which subsequently expresses its consent to be bound by it, the Convention shall enter into force on the first day of the month following the expiry of a period of three months after the date of the deposit of the instrument of ratification, acceptance or approval.
Art.18.1x.g g any other act, notification, information or communication relating to this Convention.


In this unfair labor practice proceeding under the Labor Management Relations Act, respondent contended that it was not an "employer," but came within the "political subdivision" exemption in § 2(2) of the Act. The National Labor Relations Board (NLRB) had found that respondent met neither of the tests to which it held that exemption was limited, viz., entities that are either (1) created directly by the State, so as to constitute governmental departments or administrative arms, or (2) administered by individuals who are responsible to public officials or the general electorate. The Court of Appeals upheld respondent's contention, viewing as controlling a Tennessee Supreme Court decision construing the State's Utility District Law under which respondent had been organized. A District organized under that statute is a "municipality' or public corporation," has eminent domain powers, is exempt from state, county, or municipal taxation, and whose income from its bonds is exempt from federal income tax. The officers who conduct the District's business receive nominal compensation, are appointed by a public official, and are subject to removal by statutory procedures applicable to public officials.
1. Federal, rather than state, law governs the determination whether an entity is a "political subdivision" of a State within the meaning of § 2(2) of the Labor Management Relations Act. NLRB v. Randolph Electric Membership Corp., 343 F.2d 60. Pp. 402 U. S. 602-604.
comes within the coverage of that statutory exemption. Pp. 402 U. S. 604-609.
BRENNAN, J., delivered the opinion of the Court, in which BURGER, C.J., and BLACK, DOUGLAS, HARLAN, WHITE, MARSHALL, and BLACKMUN, JJ., joined. STEWART, J., filed a dissenting opinion, post, p. 402 U. S. 609.
and was certified by the Board as bargaining representative of the pipefitters, respondent refused to comply with the Board's certification and recognize and bargain with the Union. An unfair labor practice proceeding resulted and the Board entered a cease and desist order against respondent on findings that respondent was in violation of §§ 8(a)(1) and 8(a)(5) of the Act, 29 U.S.C. §§ 158(a)(1) and 158(a)(5). 170 N.L.R.B. 1409 (1968). Respondent continued its noncompliance, and the Board sought enforcement of the order in the Court of Appeals for the Sixth Circuit. Enforcement was refused, the court holding that respondent was a "political subdivision," as contended. 427 F.2d 312 (1970). We granted certiorari, 400 U.S. 990 (1971). We affirm.
"There are, of course, instances in which the application of certain federal statutes may depend on state law. . . ."
"But this is controlled by the will of Congress. In the absence of a plain indication to the contrary, however, it is to be assumed when Congress enacts a statute that it does not intend to make its application dependent on state law. Jerome v. United States, 318 U. S. 101, 318 U. S. 104 . . . (1943)."
"The argument of the electric corporations fails to persuade us that Congress intended the result for which they contend. Furthermore, it ignores the teachings of the Supreme Court as to the congressional purpose in enacting the national labor laws. In National Labor Relations Board v. Hearst Publications, 322 U. S. 111, 322 U. S. 123 . . . (1944), the Court dealt with the meaning of the term 'employee' as used in the Wagner Act, saying: "
administered by a national agency, intended to solve a national problem on a national scale. . . . Nothing in the statute's background, history, terms or purposes indicates its scope is to be limited by . . . varying local conceptions, either statutory or judicial, or that it is to be administered in accordance with whatever different standards the respective states may see fit to adopt for the disposition of unrelated, local problems."
"Thus, it is clear that state law is not controlling, and that it is to the actual operations and characteristics of [respondents] that we must look in deciding whether there is sufficient support for the Board's conclusion that they are not 'political subdivisions' within the meaning of the National Labor Relations Act."
are responsible to public officials or to the general electorate."
The Board's construction of the broad statutory term is, of course, entitled to great respect. Randolph Electric, supra, at 62. This case does not however require that we decide whether "the actual operations and characteristics" of an entity must necessarily feature one or the other of the Board's limitations to qualify an entity for the exemption, for we think that it is plain on the face of the Tennessee statute that the Board erred in its reading of it in light of the Board's own test. The Board found that "the Employer in this case is neither created directly by the State nor administered by State-appointed or elected officials." 167 N.L.R.B. at 691-692 (footnotes omitted). But the Board test is not whether the entity is administered by "State-appointed or elected officials." Rather, alternative (2) of the test is whether the entity is "administered by individuals who are responsible to public officials or to the general electorate" (emphasis added), and the Tennessee statute makes crystal clear that respondent is administered by a Board of Commissioners appointed by an elected county judge, and subject to removal proceedings at the instance of the Governor, the county prosecutor, or private citizens. Therefore, in the light of other "actual operations and characteristics" under that administration, the Board's holding that respondent "exists as an essentially private venture, with insufficient identity with or relationship to the State of Tennessee," 167 N.L.R.B. at 691, has no "warrant in the record" and no "reasonable basis in law." NLRB v. Hearst Publications, 322 U. S. 111, 322 U. S. 131 (1944).
furnishing of water, sewers, sewage disposal, police protection, fire protection, garbage collection, street lighting, parks, and recreational facilities, as well as the distribution of natural gas. Tenn.Code Ann. § 6-2608 (Supp. 1970). Acting under the statute, 38 owners of real property submitted in 1957 a petition to the county court of Hawkins County requesting the incorporation of a utility district to distribute natural gas within a specified portion of the county. The county judge, after holding a required public hearing and making required findings that the "public convenience and necessity requires the creation of the district," and that "the creation of the district is economically sound and desirable," Tenn.Code Ann. § 6-2604 (Supp. 1970), entered an order establishing the District. The judge's order and findings were appealable to Tennessee's appellate courts by any party "having an interest in the subject matter." Tenn.Code Ann. § 6-2606 (1955).
"all the powers necessary and requisite for the accomplishment of the purpose for which such district is created, capable of being delegated by the legislature."
"a 'municipality' or public corporation in perpetuity under its corporate name and the same shall in that name be a body politic and corporate with power of perpetual succession, but without any power to levy or collect taxes."
exempt from such taxation, except for inheritance, transfer, and estate taxes. Tenn.Code Ann. § 6-2626 (1955).
The District's records are "public records," and, as such open, for inspection. Tenn.Code Ann. § 6-2615 (Supp. 1970). The District is required to publish its annual statement in a newspaper of general circulation, showing its financial condition, its earnings, and its method of setting rates. Tenn.Code Ann. § 6-2617 (Supp. 1970). The statute requires the District's commissioners to hear any protest to its rates filed within 30 days of publication of the annual statement at a public hearing, and to make and to publish written findings as to the reasonableness of the rates. Tenn.Code Ann. § 6-2618 (1955). The commissioners' determination may be challenged in the county court, under procedures prescribed by the statute. Ibid.
judge appoints a new commissioner if the remaining two commissioners cannot agree upon a replacement. Tenn.Code Ann. § 6-2614 (Supp. 1970). In large counties, all vacancies are filled by popular election. Ibid. The commissioners are generally empowered to conduct the District's business. They have the power to subpoena witnesses and to administer oaths in investigating District affairs, Tenn.Code Ann. § 6-2616(5) (1955), and they serve for only nominal compensation. Tenn.Code Ann. § 6-2615 (Supp. 1970). Plainly, commissioners who are beholden to an elected public official for their appointment, and are subject to removal procedures applicable to all public officials, qualify as "individuals who are responsible to public officials or to the general electorate" within the Board's test.
Tenn.Code Ann. § 2612 (1955). The District's "public records" requirement and the automatic right to a public hearing and written "decision" by the commissioners accorded to all users betoken a state, rather than a private, instrumentality. The commissioners' power of subpoena and their nominal compensation further suggest the public character of the District.
from federal income tax, as income from an obligation of a "political subdivision" under 26 U.S.C. § 103. Social Security benefits for the District's employees are provided through voluntary, rather than mandatory, coverage, since the District is considered a political subdivision under the Social Security Act. 42 U.S.C. § 418.
"The term 'employer' includes any person acting as an agent of an employer, directly or indirectly, but shall not include the United States or any wholly owned Government corporation, or any Federal Reserve Bank, or any State or political subdivision thereof, or any corporation or association operating a hospital, if no part of the net earnings inures to the benefit of any private shareholder or individual, or any person subject to the Railway Labor Act, as amended from time to time, or any labor organization (other than when acting as an employer), or anyone acting in the capacity of officer or agent of such labor organization."
Respondent agrees in its brief in this Court, p. 13, that state law is not controlling.
See 78 Cong Rec. 10351 et seq.; Hearings on Labor Disputes Act before the House Committee on Labor, 74th cong., 1st Sess, 179; 93 Cong. Rec 6441 (Sen. Taft). See also C. Rhyne, Labor unions and Municipal Employee Law 436-437 (1946); Vogel, What About the Rights of the Public Employee?, 1 Lab L.J. 604, 612-615 (1950).
The commissioners' initial terms are staggered, with one commissioner appointed to a two-year term, one to a three-year term, and one to a four-year term. Tenn.Code Ann. § 2604 (Supp. 1970).
I agree with the Court that federal, rather than state, law governs the determination of whether an employer is a "political subdivision" of the State within the meaning of § 2(2) of the National Labor Relations Act, as amended, 29 U.S.C. § 152(2). But I cannot agree that the Board erred in this case in concluding that the respondent is not entitled to exemption under the Act.
In determining that the respondent Utility District was not a "political subdivision" of the State, the Board followed its settled policy of weighing all relevant factors, with particular emphasis here on the circumstances that the District is neither "created directly by the State" nor "administered by State-appointed or elected officials," and is "autonomous in the conduct of its day-to-day affairs." On the other side, the Board gave less weight to the State's characterization of a utility district as an arm of the State for purposes of exemption from state taxes and conferral of the power of eminent domain.
as state tax exemption and the power of eminent domain are not attributes peculiar to political subdivisions nor attributes with any discernible impact on labor relations. Attributes which would implicate labor policy, such as the payment of wages out of public funds or restrictions upon the right of the employees to strike, are not present here.
The Court points to provisions that the records of the District be available for public inspection, and that the commissioners of the District hold hearings and make written findings. These factors are said to "betoken a state, rather than a private, instrumentality." The question, however, is not whether the District is a state instrumentality, but whether it is a "political subdivision" of the State. And the provisions in question hardly go to that issue.
The Board's reasonable construction of the Act is entitled to great weight, and it is not our function to weigh the facts de novo and displace its evaluation with our own. The Board here has made a reasoned decision which does no violence to the purposes of the Act. Accordingly, I would reverse the judgment of the Court of Appeals and remand the case with instructions to enforce the Board's order.


Jackson & Hertogs, San Francisco, Cal., for appellant.
Laughlin E. Waters, U. S. Atty., James R. Dooley, Richard A. Lavine, Asst. U. S. Attys., Los Angeles, Cal., for appellee.
This appeal involves one of two plaintiffs who jointly filed an action below for a declaratory judgment of United States citizenship.1 Wong Kwok Keung, one of the two alleged foreign-born sons of Wong Ho, an American citizen of Chinese ancestry,2 won his case; the second Wong Kwok Wei, lost his case. Hence, the latter, sometimes hereinafter referred to as Wei, appeals.
The joint action was tried in the court below without a jury. Timely appeal was filed. This court has jurisdiction. 28 U.S.C. § 1291.
The facts are not complicated, but need some exposition. The alleged father, Wong Ho, is undisputably a United States citizen who lawfully resided in the United States prior to the birth of appellant, whether that birth took place in 1935, as appellant claims, or closer to 1941, as the Government claims. Appellant claims to have been born in China on April 30, 1935. If appellant was born in 1941, or thereabouts, Wong Ho could not have been his father. It was stipulated at the trial that Wong Ho remained in the United States at all times after his initial entry in 1914, except from December 10, 1921 to December 14, 1923, and from May 30, 1934 to June 23, 1937.
In 1950 both plaintiffs below filed with the American Consulate General at Hong Kong an application for a United States passport, claiming the same right of citizenship they rely on in this proceeding. A Consulate official denied their application, and they filed this action below.
At the trial the alleged father, Wong Ho, and two brothers, presently in this country, testified to the relationship. This testimony would have been accepted by the trier of fact as satisfactory3 but for certain other evidence, some introduced by the Government and some given by one of appellant's witnesses on cross-examination.
Over the objection of the appellant, the Government introduced in evidence the deposition of one Dr. Iain S. Bergius, a Medical Practitioner of Hong Kong, B.C.C. This physician, educated in Scotland with seventeen years of practice in Hong Kong, did not profess to be an expert in radiology, but because of special studies in biochemistry, microscopic technique, comparative anatomy, embryology and physical anthropology, had been requested by his medical partners to make some 680 X-ray examinations of Chinese to determine their age. He had taken X-rays of Wei on March 14, 1951. By deposition taken November 9, 1956, he testified it was his opinion and best estimate that Wong Kwok Wei was nine to ten years old at the time of the examination on March 14, 1951.4 To his deposition (Defendant's Ex. C), there were attached the five X-ray views taken of appellant, upon which his opinion was based.
In an apparent effort to rebut this deposition testimony, the appellant produced as a witness George Jacobson, M. D., an eminently qualified local radiologist. His testimony corroborated that of Dr. Bergius. The trial judge so expressed himself. Using a different reference book,5 standard in this country, it was Dr. Jacobson's opinion that the X-rays of Wei's wrist taken on March 14, 1951 (Ex. C) showed an age of "somewhere between 10 and 11 years of age." "According to our standards, they [the X-rays] could not correspond to a normal boy at the age of 15." Plaintiff's Exhibit 13, taken on January 31, 1952 in San Francisco, showed the wrists of a person of an age of twelve years and six months. Plaintiff's Exhibit 14, taken of Wei's wrists on January 23, 1957 by Dr. Jacobson, presented a more difficult problem because of Wei's increased age. Dr. Jacobson estimated the age as seventeen to twenty-five years.6 He, like Dr. Bergius, was careful and conscientious in the opinions he expressed.7 That Wei was twenty-one years of age in January 1957 was "within the realm of possibility."
Two points are raised by appellant. One, that Defendant's Exhibit C (the Bergius deposition with X-rays attached) was admitted in error, and two, that the conclusion of the district court on the facts was erroneous.
We can quickly dispose of the second point.
This is not a case where the only testimony against the appellant is a "government expert" who has expressed an opinion based on "general suspicion" or a "slight difference between the age claimed and the age suspected or guessed at."9 The citation of other immigration cases where on different facts the Commissioner or the courts have decided in favor of the immigrant, does not help us here.
The district judge indicated he was searching for some legitimate and honorable way to find that the preponderance of the evidence favored the appellant.10 But this he could not do.
Appellee concedes that the burden of proof which plaintiffs must sustain in actions under section 503 of the Nationality Act of 1940 is an ordinary one. Wong Gong Fay v. Brownell, 9 Cir., 1956, 238 F.2d 1; Chow Sing v. Brownell, 9 Cir., 1956, 235 F.2d 602; Ly Shew v. Dulles, 9 Cir., 1954, 219 F.2d 413, 416. This rule was recognized by the court below.11 However, it is equally clear that findings of fact by the trial court will not be set aside on appeal unless clearly erroneous. Fed. R. Civ. P. 52(a), 28 U.S.C.A.; United States v. United States Gypsum Co., 1948, 333 U.S. 364, 395, 68 S. Ct. 525, 92 L. Ed. 746; Lew Wah Fook v. Brownell, 9 Cir., 1955, 218 F.2d 924, certiorari denied 349 U.S. 944, 75 S. Ct. 872, 99 L. Ed. 1270; Attorney General of the United States v. Ricketts, 9 Cir., 1947, 165 F.2d 193.
We find no clear error here.
As to the deposition of Dr. Bergius, while it is true that the appellant was not represented at its taking, it was taken on notice, and he had the opportunity to be represented at the taking, had he desired to do so. The deposition of Dr. Bergius was authorized, taken, and admitted under Fed. R. Civ. P. 26(d) (3), subdivision 2.
Dr. Bergius' testimony was not only as an expert, but as to matters of fact. For example, he was the only person who could identify the X-rays attached to the deposition as X-rays taken of appellant. This necessary foundation had to be established before their use either by the government or by appellant's counsel who showed them to his own expert, Dr. Jacobson, and asked for his interpretation of them.
Nor was appellant denied the right of cross-examination. A Notice of Taking Deposition on Oral Examination was filed and served on counsel for appellant on October 5, 1956, over a month before the deposition was taken. No objection to this notice was interposed. Had appellant wished to avoid the expense of retaining counsel in Hong Kong to represent him at the taking of the deposition, he could have moved for an order of protection as authorized by Fed. R. Civ. P. 30(b). The court below might then have compelled appellee to proceed upon written interrogatories. Appellant objected to the deposition for the first time at trial. It was then too late for appellee to secure the essential testimony of Dr. Bergius or to identify the radiograph attached to his deposition by other means. By his inaction appellant waived the right of cross-examination. 26A C.J.S. Depositions § 68.
"Mr. Hertogs, as I said before, and I reiterate, and I hope if the case is taken up to the Circuit you will underline my reiteration, if it wasn't for this deposition, I would hold in favor of the plaintiff, because I was satisfied with the testimony of the plaintiff's witnesses. I would have held for the plaintiff from the bench, I wouldn't have had to study the record, because I was satisfied, but in the light of that deposition and the findings of the doctor, which has been substantiated by the doctor who testified today, I don't see how I can get around the finding as to his bone age."
Dr. Bergius was apparently a careful and conscientious witness. He refused to state categorically that Wong Kwok Wei was not 15½ years old, but only that it was "not very likely." He explained his reasons for his opinion. He gave the medical authority he relied upon. He allowed for the recognized possible margin of error (½ year either way before puberty; 2½ to 3 years either way after puberty; 10 years either way after an attained age of 22 to 25). He specifically described from the X-rays he took what he was looking for, and what was missing (fusion of bony joint at trachlear center of the elbow joint).
On the other hand, this could also represent the bones of a boy of 21 now, so that if that were true, then there would be a discrepancy. In other words, he could have accelerated growth, between the films of 1952 and the films of today. Now this [is] something, of course, I would have no way to judge. * * *"


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PARAISO INTERNATIONAL PROPERTIES, INC., Petitioner, VS. COURT OF APPEALS and PEOPLE’S HOUSING LAND CORPORATION, Respondents.
Assailed before the Court via a petition for certiorari under Rule 65 of the Rules of Court are the November 12, 2001 and the March 7, 2002 Resolutions of the Court of Appeals (CA) in CA-G.R. CV No. 71311.
The records reveal that on April 2, 1998 the parties submitted to the appellate court a 6-page undated Compromise Agreement amicably settling all their pending cases -- CA-G.R. CV No. 71311, CA-G.R. SP No. 38197 (both pending with the Court of Appeals), and Civil Case No. P-962 (lodged with the Regional Trial Court of Balayan, Batangas).
The parties also submitted to the appellate court, as "Annex A" of the Compromise Agreement, a 2-page undated Deed of Assignment executed by petitioner, represented by Hisahide Saito, transferring to Ryuji Nonoda and Ferdinand Belgica all the shares of stocks, paid-up, subscription rights and interests therein, including the right to represent the corporation in the pending cases. Hisahide Saito signed the deed as the representative of the outgoing management of petitioner, while Nonoda and Belgica, affixed their signatures as the assignees and as the representatives of petitioner's new management. Significantly, the acknowledgement portion of the deed had been crossed out.
Further submitted to the CA as "Annexes B and C" of the Compromise Agreement were, respectively, the Secretary's Certificate confirming that the petitioner's board of directors authorized Hisahide Saito to negotiate, sign, endorse and deliver the Compromise Agreement to the respondent; and the Secretary's Certificate proving that respondent's board of directors authorized J. Antonio Leviste and Atty. Cirilo A. Avila to enter into and execute a compromise agreement with petitioner.
Perceptive of the apparent formal defects in the agreement and the deed, the CA, on September 25, 1998, resolved to direct respondent to inform the court why the Compromise Agreement and the Deed of Assignment were undated; why there was no signature of the authorized representative of the new management; whether the signature/initial of the one representing respondent was that of J. Antonio Leviste; and why the acknowledgement in the Deed of Assignment was crossed out.
As two years passed without any compliance with the said directive, the CA, on August 8, 2000, resolved to require respondent's counsel to show cause why he should not be held in contempt for failing to comply, with the order, and reiterated the directive for him to comply with the said resolution.
On November 12, 2001, the appellate court, in the first assailed resolution, disapproved the compromise agreement for respondent's failure to comply with the CA's resolutions.
Petitioner subsequently filed its December 6, 2001 Manifestation/Motion and its December 21, 2001 Supplemental Argument explaining that the failure of respondent's counsel to comply with the resolutions of the court should neither prejudice nor defeat the duly executed compromise agreement of the parties; that, being a consensual contract, it was perfected upon the parties' meeting of the minds; and that judicial approval was not required for its perfection.
On March 7, 2002, the CA, in the second assailed resolution, denied petitioner's manifestation/motion on the ground that the compromise agreement was not exempt from the rules and principles of a contract, and for the parties' repeated refusal to explain to the appellate court the apparent flaws in the said agreement.
COURT OF APPEALS GRAVELY ERRED AND ABUSED ITS DISCRETION AMOUNTING TO LACK OF OR IN EXCESS OF JURISDICTION IN FAILING TO APPROVE THE COMPROMISE AGREEMENT, DESPITE THE FACT THAT THE INFORMATION REQUIRED IN ITS QUERIES DIRECTED AGAINST PRIVATE RESPONDENT PEOPLE'S HOUSING LAND CORPORATION'S COUNSEL ARE ALL IN FACT AVAILABLE, PRESENT OR EXTANT IN THE COMPROMISE AGREEMENT IT HAD DISAPPROVED.
In its May 3, 2004 Memorandum, petitioner explicated that the compromise agreement, indeed, has a date--November 1997, although it was signed by the parties on different dates, as indicated by the numerical notations beside their respective signatures; that the representatives of petitioner's new management, Nonoda and Belgica, also signed the agreement; that, the signature or the initial of Leviste, representing the respondent, is not questioned by the parties, thus, the same is a non-issue in the case; and that respondent's counsel even signed the agreement. Further, petitioner pointed out that the board of director's authorized both Leviste and the corporation's counsel to represent respondent in the negotiation and signing of the agreement. As to the deed of assignment, the petitioner certified that the crossing out of the acknowledgement should not affect the deed because in the sale or assignment of shares of stocks, acknowledgement or notarization is not a requirement for the contract's validity. Likewise, the deed contains a date, 1998. In addition, petitioner stated that, the deed's authenticity or validity is confirmed by the Secretary's Certificate attesting to the fact that petitioner's board of directors authorized Saito to sign the compromise agreement with Nonoda and Belgica relative to the management and control of the corporation's affairs or activities.
Respondent, in its July 13, 2004 Memorandum, manifested that it is adopting petitioner's memorandum.
The sole issue for the resolution of the Court is whether the appellate court gravely abused its discretion in when it disapproved the compromise agreement.
For a writ of certiorari to issue, the applicant must show that the court or tribunal acted with grave abuse of discretion in issuing the challenged order. Grave abuse of discretion is defined as such capricious and whimsical exercise of judgment as is equivalent to lack of jurisdiction. The abuse of discretion must be grave, as where the power is exercised in an arbitrary or despotic manner by reason of passion or personal hostility, and must be so patent and gross as to amount to an evasion of positive duty or to a virtual refusal to perform the duty enjoined by or to act at all in contemplation of law.
In the instant case, the appellate court gravely abused its discretion in disapproving the compromise agreement for the simple reason that respondent did not comply with the CA's resolutions requiring it to explain the apparent formal defects in the agreement. The Court notes that the appellate court unnecessarily focused its attention on the defects in the form of the compromise agreement when these flaws in formality do not go into the validity of the parties' contract, and, more importantly, when none of the parties assails its due execution.
To elucidate, the absence of a specific date does not adversely affect the agreement considering that the date of execution is not an essential element of a contract. A compromise agreement is essentially a contract perfected by mere consent, the latter being manifested by the meeting of the offer and the acceptance upon the thing and the cause which are to constitute the contract. The CA should have allowed greater laxity in scrutinizing the compromise agreement, not only because the absence of a specific date is a mere formal defect, but also because the signatories to the compromise indicated the date when they signed the agreement beside their signatures. These signatories are also sufficiently authorized to enter into a compromise by the respective board of directors of the petitioner and the respondent. It is not amiss to state at this point that in National Commercial Bank of Saudi Arabia v. Court of Appeals, we approved an undated compromise agreement.
The Court also finds as glaringly erroneous the CA's inquiry as to whether the new management of petitioner has signed the said compromise agreement. As aforesaid, the one authorized by petitioner's board of directors to sign the agreement is Saito, who indeed signed the same. Additionally, the representatives of the new management, Nonoda and Belgica, also affixed their respective signatures in the agreement.
As to whether the signature/initial of respondent's representative is truly that of Leviste, suffice it to state that none of the parties assails the due execution of the compromise agreement and that the signature of Avila, the other representative authorized by the respondent's board of directors to enter into a compromise, is affixed in the agreement.
The crossing out of the acknowledgement portion of the deed of assignment attached to the compromise agreement is of no moment precisely because, as advanced by the parties, the notarization of the deed or even its execution is not a requirement for the valid transfer of shares of stocks. On the question why the deed is undated, again, the date is not essential for its validity. In any case, the execution of the deed of assignment and its annexation to the compromise agreement are a superfluity because, as aforesaid, petitioner's board of directors had authorized Saito to enter into the compromise agreement, he signed the same, and even the representatives of petitioner's new management likewise signed the agreement.
From the foregoing, our inevitable conclusion is that the CA acted with grave abuse of discretion when it disapproved the compromise agreement. However, rather than remand the case to the appellate court which will only further delay the lengthy litigation that the parties wish to end, we choose to act directly on the matter. Thus, on the basis of our finding that the compromise agreement is not contrary to law, public order, public policy, morals or good customs, the Court hereby approves the same.
WHEREFORE, premises considered, the petition is GRANTED. The assailed November 12, 2001 and March 7, 2002 Resolutions of the Court of Appeals in CA-G.R. CV No. 71311 are ANNULLED AND SET ASIDE for having been issued with grave abuse of discretion. The Compromise Agreement submitted by the parties on April 2, 1998 is hereby APPROVED and judgment is rendered in conformity with and embodying the terms and conditions mentioned in the said Compromise Agreement.
 Penned by Associate Justice Josefina Guevara-Salonga, with Associate Justices Godardo A. Jacinto and Eloy R. Bello, Jr. concurring; rollo, p. 38.
"1. Plaintiff-[a]ppellant and [d]efendant-[a]ppellee have mutually agreed that it is to their best interests to enter into an amicable settlement of all their cases, and to direct their efforts towards the development of a `golf and mountain resort', which will redound to the benefit of the parties, the Province of Batangas, and its constituents; That this COMPROMISE AGREEMENT shall likewise apply to the other cases pending between the parties, especially Civil Case No. P-962 (RTC-Balayan, Batangas), C.A.-G.R. SP No. 38197 (Court of Appeals).
"2. Plaintiff-appellant's present management represented by Mr. Hisahide Saito (Saito for brevity) has agreed to assign all their shares of stocks, paid-up and subscription rights and interest therein (including the right to represent [p]laintiff corporation in the instant action) in favor of Messrs. Ryuji Nonoda and Ferdinand Belgica (NONODA and BELGICA for brevity) as evidenced by a duly executed Deed of Assignment, a copy of which is hereto attached as Annex "A" hereof. As represented by Saito, it is understood that the total authorized capital of [p]laintiff corporation has been fully subscribed to and totally paid up by all the stockholders and that no such Certificate of Stock is delinquent. It is further represented by Saito and understood by defendant that plaintiff corporation does not have any indebtedness with any person or entity whomsoever except the mortgage and promissory note mentioned herein. Defendant recognizes that this deed of assignment is for valuable consideration.
"b. P30 [m]illion within a period of six months from execution hereof, the same to be paid by plaintiff from the proceeds of the sale of the [p]roprietary shares, to be sold by the corporation upon licensing thereof, by allocating 65% thereof for the purpose and 35% for development. Otherwise, the same shall be raised by the plaintiff thru other means. It is understood that the processing for SEC approval thereof maybe the abovesaid period of six months after which the sale of proprietary share may commence. However, if the same is delayed for reasons not attributable to plaintiff, the defendant agrees to extend the period for a reasonable length of time. Pending full compliance by NONODA and BELGICA of the same, they shall tender unto defendant J. Antonio Leviste physically and by way of mortgage to serve as guarantee for their performance of said obligation, 50% of their shares within the corporation.
"c. 400 proprietary shares out of the proposed 2,000 proprietary shares at a value of 400,000 pesos per share to be issued by Paraiso after the registration and licensing thereof by the Securities and Exchange Commission. From the remainder of these two thousand proprietary shares, the proceeds of one thousand one hundred shares out of the 2,000 shares shall be utilized for development of the project while the remaining balance of five hundred shares shall belong to the corporation to be shared between plaintiff and defendant on a 80:20 basis, provided however, that 200 shares thereof shall be mortgaged in favor of Saito to secure Nonoda and Belgica's indebtedness to him, the same to be received, lifted upon full payment thereof.
"d. 20% of NONODA [and] BELGICA's total outstanding capital stock of Paraiso shall be assigned unto defendant, or its representative, Mr. J. Antonio Leviste.
"e. In addition to the foregoing, Mr. J. Antonio Leviste or the defendant shall be allowed to designate two members of the [b]oard of [d]irectors of the [c]orporation out of a total membership of five notwithstanding defendant's twenty percent ownership of outstanding capital of the corporation, one of which shall be the [c]hairman and the other the [s]ecretary. Said members of the [b]oard of [d]irectors shall have full, irrevocable and indispensable signing authority over all actions of the [c]orporation including signing and issuance of checks and other similar financial instruments.
"4. Upon execution of this compromise agreement, the real estate mortgage and promissory note subject matter of the auction sale on 20 June 1994, in favor of People's shall be cancelled, waived and extinguished, and all entries or liens and encumbrances thereon, including but not limited to the real estate mortgage, promissory note, certificate of sale, final certificate of sale, on TCT's Nos. 63107, 63108, 63109, 63116, 63111, 63112, 63113, 63114, 63115, 63116, 63117, 63118 and 63119, or any derivative titles thereof issued by the Register of Deeds of Balayan, Batangas covering thirteen (13) parcels of land situated at Barangay Paraiso, Calatagan, Batangas shall be CANCELLED, and the said parcels of land shall be free from any and all liens and encumbrances. However, a one-hectare portion of the property encompassing and embracing the natural spring, as may be separately surveyed hereinafter, shall be excluded from this agreement and shall belong to defendant by virtue hereof provided the same remains and is used as a mini-forest. In the event defendant desires to sell this portion later, in addition to the consideration agreed herein, plaintiff shall be given the right of first refusal to buy the same at its fair market value.
"c. 22% held in trust to Saito shall be released in favor of defendant and/or J. Antonio Leviste.
The release of 18% and 22% to Saito and defendant and/or J. Antonio Leviste respectively, shall automatically release NONODA and BELGICA from their respective obligation to Saito and defendant and/or J. Antonio Leviste. It is understood that the 18% belonging to Saito shall continue to remain under his name for any project that the plaintiff corporation may choose to engage. The release of 18% to Saito shall automatically cancel NONODA and BELGICA's obligation to Saito. Pending full compliance by NONODA and BELGICA of their obligations under this agreement, they shall not be allowed to alienate or otherwise encumber any portion of their 80% share of the corporation to any person or entity except the 40% held in trust by SAITO pending the performance of NONODA and BELGICA of their obligation to the same. It is understood that upon full payment and satisfaction of all the considerations agreed hereunder, the mortgage constituted on the shares of stock held by NONODA and BELGICA in favor of defendant J. Antonio Leviste shall be automatically cancelled and nullified and correspondingly released to them free from all liens and encumbrances.
"6. It is mutually agreed that the development of the project shall commence after the issuance of the SEC permit and other licenses and permits from the appropriate government agencies as decided by virtue of a company board resolution. The development shall be completed within a period of three (3) years from its commencement provided that a 33% partial accomplishment of the project shall be completed after one year and 66% after 2 years and 100% by the third year. The 3 accomplishment periods may be extended if the delay is not attributable to the plaintiff.
"7. That the parties agree to execute and sign any additional document/paper that may be required to carry into effect this Agreement.
"8. That the [p]laintiff-[a]ppellant and [d]efendant-[a]ppellee hereby waive any and all claims and counterclaims against each other subject to and except those set forth herein.
"9. That this "Compromise Agreement" bears the conformity of all the parties and their representative whose authorities are shown in the corresponding Special Powers of Attorney, copies of which are hereto attached as Annexes B and C hereof duly assisted by their respective counsels and the parties further certify, that the same is not contrary to law, morals, public (sic) and public order.
"WHEREFORE, in view of the foregoing, it is most respectfully prayed of this Honorable Court of Appeals, that the Decision dated 15 April 1997 be ANNULLED AND SET ASIDE, and in lieu thereof, a NEW DECISION be ISSUED based on the "Compromise Agreement", and the parties be ENJOINED to strictly comply with the same.
"PLAINTIFF-APPELLANT and DEFENDANT-APPELLEE, further pray for such other reliefs as may be deemed just and equitable in the premises.
"Makati City, _____ November 1997.
 Yuchengco v. Court of Appeals, G.R. No. 165793, October 27, 2006, 505 SCRA 716; see Estate of Salud Jimenez v. Philippine Export Processing Zone, G.R. No. 137285, January 16, 2001, 349 SCRA 240 where the Court further explained that, as a general rule, a petition for certiorari will not lie if an appeal is the proper remedy thereto such as when an error of judgment as well as of procedure are involved. As long as a court acts within its jurisdiction and does not gravely abuse its discretion in the exercise thereof, any supposed error committed by it will amount to nothing more than an error of judgment reviewable by a timely appeal and not assailable by a special civil action of certiorari. However, in certain exceptional cases, where the rigid application of such rule will result in a manifest failure or miscarriage of justice, the provisions of the Rules of Court which are technical rules may be relaxed. Certiorari has been deemed to be justified, for instance, in order to prevent irreparable damage and injury to a party where the trial judge has capriciously and whimsically exercised his judgment, or where there may be danger of clear failure of justice, or where an ordinary appeal would simply be inadequate to relieve a party from the injurious effects of the judgment complained of.
 See Article 2028 of the Civil Code, which states that a compromise is a contract whereby the parties, by making reciprocal concessions, avoid a litigation or put an end to one already commenced; see also Clark Development Corp. v. Mondragon Leisure, G.R. No. 150986, March 2, 2007, 517 SCRA 203, where the Court ruled that a compromise is an agreement between two or more persons who, for preventing or putting an end to a lawsuit, adjust their respective positions by mutual consent in the way they feel they can live with; and that reciprocal concessions are the very heart and life of every compromise, where each party approximates and concedes in the hope of gaining balance by the danger of losing.
 Mactan-Cebu International Airport Authority v. Court of Appeals and Chiongbian, G.R. No. 139495, November 27, 2000, 346 SCRA 126.
 See Article 2033 of the Civil Code, which states that juridical persons may compromise only in the form and with the requisites which may be necessary to alienate their property; see also Great Asian Sales Center Corporation v. Court of Appeals, G.R. No. 105774, April 25, 2002, 381 SCRA 557, where the Court stated that the Corporation Code of the Philippines vests in the board of directors the exercise of the corporate powers of the corporation, save in those instances where the Code requires stockholders' approval for certain specific acts.
 G.R. No. 124267, January 17, 2005, 448 SCRA 340.
 See Republic v. Estate of Hans Menzi, G.R. Nos. 152578, 154487 & 154518, November 23, 2005, 476 SCRA 20, where the Court declared that the absence of a deed of assignment is not a fatal flaw which renders the transfer of shares of stocks invalid.
SEC. 63. Certificate of stock and transfer of shares.--The capital stock of stock corporations shall be divided into shares for which certificates signed by the president or vice president, countersigned by the secretary or assistant secretary, and sealed with the seal of the corporation shall be issued in accordance with the by-laws. Shares of stocks so issued are personal property and may be transferred by delivery of the certificate or certificates indorsed by the owner or his attorney-in-fact or other person legally authorized to make the transfer. No transfer, however, shall be valid, except as between the parties, until the transfer is recorded in the books of the corporation showing the names of the parties to the transaction, the date of the transfer, the number of the certificate or certificates and the number of shares transferred.

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The Polish company FARMINA Sp. z o.o. filed before the Polish Patent Office a notice of opposition to the final decision on the grant of a right of protection for the word-figurative trade mark FARMONA Waliczek R-190461 registered for goods in Classes 3 and 5. Farmina argued that the trade mark FARMONA Waliczek is similar to its word trade mark FARMINA R-98950 also registered for goods in Classes 3 and 5. Laboratorium Kosmetyków Naturalnych FARMONA Sp. z o.o., the owner of a contested registration, argued that both signs are different, and as such there is no likelihood of confusion. FARMONA Sp. z o.o. also requested the PPO to decided on the lapse of the right of protection for the trade mark FARMINA R-98950 for goods in Class 3. In its letter of May 2010, FARMONA withdrew all previous arguments made by a former attorney in the case and has requested the PPO not to take into the account of all the evidence submitted. FARMONA argued that the goods are not similar, and from the range of over 300 prodcts, only 3 are distibuted in pharmacies, but only in those who have a cosmetic department. FARMONA argued that the parties operate in other industries. FARMONA Waliczek is engaged in the production of natural cosmetics offering a series of body care products, facial hair, as well as professional cosmetics for beauty salons and spas. FARMINA, however, claims to be a producer of drugs.
FARMINA argued that the PPO should dismiss the request to decide on the lapse of the trade mark. The Company claimed that not only it produces goods for pharmaceutical purposes, but also products for the purposes of care, which according to some people may belong to Class 5 of the Nice Classification. FARMINA stated that it uses its trade mark for the goods associated with personal care such as soaps, gels, creams, cosmetics and hair care products. The Comapny indicated that, in principle, all cosmetics contain ingredients that cause skin regeneration and it is debatable whether or not they should be considered as therapeutic agents or care products. The Opponent also argued that, due to the fact that it uses the trade mark FARMINA for goods similar or complementary to the perfumery products, such use should be considered as use of that mark for goods in Class 3 of the Nice Classification.
The Polish Patent Office noted that the right of protection for a trademark may not be invalidated on a sole ground that the trademark is similar to an earlier trademark, where the latter has not been genuinely used. This argument that the sign has not been genuinely used may only be raised when accompanied by a request for declaring the right of protection lapsed. The case should be examined jointly with the request for invalidation. The PPO decided that the trade mark FARMINA was not genuinely used for perfumery and ruled that the right of protection lapsed as of November 2002. In the opinion of the PPO, the compared trade marks had to be regarded as similar as the dominant elements in the signs are verbal elements FARMINA and FARMONA. These are words of the same length, consisting of the same number of syllables, and which contain the same beginning and ending. These words differ only in the fifth letter. The similarities are not excluded by the use of another verbal element, the word “Waliczek”, because this element is the name of the owner of the company, thus, this word refers in its content to the information that may suggest the average person, a person who organizes and operates a business or businesses, the licensee, or the founder of the company, etc. The PPO invalidated the right of protection for the trade mark FARMONA Waliczek for the following products in Class 5: antisepsis, balms for medical purposes, biological preparations for medical purposes, enzymes for pharmaceutical purposes, enzymes for medical purposes, tea with herbs, medicinal ointments for pharmaceutical use, preparations with microelements for humans and animals, tinctures for medical purposes, dietetic beverages for medicinal purposes, oils for medicinal purposes, analgesics, laxatives, vitamin supplements, extracts for medicinal purposes, medicinal herbs, candies medicinal purposes, syrups for medical use, dietetic foods for medicinal purposes, gelatin for medical purposes. Both companies filed complaints against this decision.
The Voivodeship Administrative Court in its judgment of 15 April 2013 case file VI SA/Wa 2177/12 joined the cases in one proceeding. The Court found no reason to revoke the decision of the Polish Paten Office, and dismissed both complaints. The VAC held, inter alia, that according to the established legal doctrine (opinions presented by Professor M. Kępiński in “Niebezpieczeństwo wprowadzenia w błąd odbiorców co do źródła pochodzenia towarów w prawie znaków towarowych”, published in Zeszyty Naukowe UJ 28/1982, pp. 17,18), in the short signs (words including up to 5 letters), just one letter difference should exclude the similarity. For the signs of the average length (up to 8 characters) at least 2 letters should be different to decide on dissimilarity. Again, both companies filed cassation complaints.
The Supreme Administrative Court in its judgment of II GSK 2037/13 dismissed both.
Categories: Art. 132(1)(ii) IPL | Art. 166 IPL | Art. 169(1)(i) IPL | Art. 169(2) IPL | Art. 169(6) IPL | Polish courts | Polish institutions | Polish law | Polish Patent Office | Polish Supreme Administrative Court | Voivodeship Administrative Court.
The Polish Patent Office dismissed the opposition filed by E.I. du Pont de Nemours & Company against the decision on the grant of the right of protection for the word trade mark TEFAPAK R-199130 that was applied for the Polish company SINOGRAF S.A.
E.I. du Pont argued that the sign TEFAPAK is similar to its trade mark TEFLON R-49573 that was registered in Poland in 1968, and to its CTM TEFLON that was registered in 1996. According to the US company, the compared goods are identical or similar, and the signs share the same prefix TEF, which could lead to consumers’ confusion.
SINOGRAF S.A. requested the PPO to dismiss the opposition, and argued that the goods are directed to competent consumers of the proper level of technical knowledge, who have knowledge and experience in the field of materials, and thus much greater possibility of distinguishing different trade marks than the average recipient.
The PPO dismissed the opposition and found that the trade marks at issue are not similar, since they have significantly different overall impression both in the the visual and aural aspects. The PPO noted that there is no likelihood of confusion and it could not include the likelihood of association, because the goods are targeted to specialized recipients. E.I. du Pont filed a compliant against this decision.
The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 301/12 dismissed it. The Court held that the Polish Patent Office correctly established all circumstances of the case. The VAC agreed that the goods are identical or similar, however, the Court did not agree with the argument that the compared signs are similar to the extent that could lead to likelihood of confusion. In the opinion of the Court, the trade mark are not similar, so arguments about the use of someone else’s reputation and the reputation of the trade mark can not be justified. Dissimilar signs can not induce associations of customers, so there can be no conscious imitation and benefit from someone else’s reputation. E.I. du Pont filed a cassation complaint.
The Supreme Adminitrative Court in its judgment of 20 March 2014 case file II GSK 2005/12 dismissed it.
Categories: Art. 107 §3 APC | Art. 132(1)(ii) IPL | Art. 132(1)(iii) IPL | Art. 151 PBAC | Art. 246 IPL | Art. 7 APC | Art. 77 APC | Art. 8 APC | Art. 80 APC | Polish Act on Industrial Property Law | Polish Act on Proceedings Before Administrative Courts | Polish Administrative Proceedings Code | Polish courts | Polish institutions | Polish law | Polish Patent Office | Polish Supreme Administrative Court | similarity of goods | similarity of signs | trade mark invalidation | trademark law | Voivodeship Administrative Court.
CARTIER International AG requested the Polish Patent Office to invalidate the right of protection for the word trade mark CHATIER ROSS R-190192 registered for Firma Handlowa A & S PARFUME FACTORY Marek Asenkowicz, for goods in Class 03 such as perfumes products, toilet water, lavender water, colognes, deodorants for personal use. CARTIER claimed that the contested registration infringes on its company name and the word-figurative trade mark CARTIER R-59579. CHATIER ROSS is detrimental to the reputation of CARTIER’s signs and leads to a weakening of their attractiveness and may cause the loss of trust among buyers of CARTIER’s products.
A & S argued that trade marks in this case are not similar both visually and semantically, because the word “chatier” in French means “smooth/polished” and the word “Cartier” indicates the manufacturer. The Polish company cited the judgment of the Supreme Administrative Court of 22 October 2004 case file GSK 811/04 concerning the similarity of the trade marks WELT and WEST IR-621660. A & S also noted that the documents submitted by CARTIER do not prove the reputation of the sign “Cartier”, and pointed to the differences in price of goods bearing both trade marks.
The Polish Patent Office found similarity both of goods and signs, and invalidated the contested registration. While analyzing the evidence on the reputation of the sign “Cartier”, the PPO took into account press articles on the position of the brand in the Polish market and the perception of the consumers. It was irrelevant that the parties use their trade marks to designate goods that differ significantly in price. The PPO ruled that the price of such goods may vary depending on the business strategy of the owner. A & S filed a complaint against such decision. It was dismissed by the Voivodeship Administrative Court in its judgment of 6 July 2011 case file VI SA/Wa 867/11. A & S filed a cassation complaint, but the Supreme Administrative Court in its judgment of 7 March 2013 case file II GSK 2323/11 dismissed it.
CARTIER International AG requested the Polish Patent Office to invalidate the right of protection for the word trade mark CHATIER COOL MEN R-199458, and the PPO followed the request. A & S complaint was dismissed by the Voivodeship Administrative Court in its judgment of 17 October 2011 case file VI SA/Wa 866/11, and the Supreme Administrative Court in its judgment of 23 April 2013 case file II GSK 191/12 dismissed the cassation. The same outcome was in case of the invalidation of the right of protection of the word trade mark CHATIER PURL R-199457 that was owned by the A & S. The Voivodeship Administrative Court in its judgment of 6 September 2011 case file VI SA/Wa 865/11 dismissed the complaint against the decision of the PPO, and the Supreme Administrative Court in its judgment of 23 April 2013 case file II GSK 97/12 dismissed the cassation.
Categories: Art. 132(1)(ii) IPL | Art. 132(1)(iii) IPL | famous trade marks | likelihood of confusion | Polish Act on Industrial Property Law | Polish courts | Polish law | Polish Supreme Administrative Court | reputed trade marks | trade mark dilution | trade mark invalidation | trademark law | Voivodeship Administrative Court.
The Voivodeship Administrative Court in Warsaw in its judgment of 3 October 2011 case file VI SA/Wa 1267/11 dismissed the complaint brought by the Polish law firm BSO PRAWO & PODATKI – Bramorski Szermach Okorowska Kancelaria Prawna Spółka komandytowa against the refusal decision of the Polish Patent Office to grant the right of protection for the word-figurative trade mark BSO legge & Tasse Z-344754.
The Court agreed with the PPO that the applied sign is almost identical with the word CTM BSO no. 001463017 and ruled that for the average recipient of legal services they are similar to intellectual property consultancy, patent, design and trademark agency, because the average consumer of legal services, who comes to the office lead by a legal advisor (radca prawny) or advocate, simply instructs his case in the belief that it returns to the competent professional. The Court could not deny the competence to lawyer who is dealing with the industrial property issues and cases, as this area of law is also subject to examination for people who would like to qualify to the legal profession. This judgment is final.
Categories: Art. 132(1)(ii) IPL | Polish Act on Industrial Property Law | Polish Patent Office | similarity of services | similarity of signs | trade mark refusal | trademark law | Voivodeship Administrative Court.
On 17 October 2007, the Polish Patent Office registered the word trade mark Auto-dap R-197829 for Dariusz Chudobiński from Łódź. Andrzej Teodorczyk who owns Auto Serwis Dap, that is located in Pabianice town, filed a notice of opposition.
Mr Teodorczyk claimed that Mr Chudobiński acted in bad faith. He also noted that the sign in question was widely known in Pabianice and it was associated with the automotive garage operated by him under the name “AUTO DAP”. The garage was located in the immediate vicinity of the garage owned by Mr Chudobiński. Mr Teodorczy argued that the DAP company was founded by him in 1984, and its designation is an abbreviation of three names. Mr Teodorczyk pointed out that he had shares in the company AUTO-DAP sp. z o.o., that was also founded by Mr Chudobiński and his wife, however, he never transferred the right to the AUTO DAP sign.
The PPO dismissed the opposition and ruled that the Company AUTO-DAP sp. z o.o. has the property right to its company name, and Mr Chdobiński received a proper authorization to file for a trade mark Auto-dap for his own. The PPO ruled that a short abbreviation DAP, as an abstract term, can not be attributed to specific individuals, as their personal interest due to the order of letters in this expression. These letters can have different meanings for the average customer in perception of this determination. The Patent Office did not agree that Auto-dap trade maw was filed in bad faith. Mr Chudobiński submitted evidence documents that he used the name DAP in his business. Mr Teodorczyk, as one of the founders of the AUTO-DAP company, has agreed (and did not oppose) the use of the company’s name (firm) in this way. He used the same DAP designation in his business activities as an individual and in a company which shares has has sold to the owner of the registered trade mark. Mr Chudobiński filed a trade mark application according to the authorization and undertook the obligation to transfer the disputed trade mark on the company, for each request. It was therefore an application that has been made in good faith – the mark was used by the company for nearly 6 years – and the authorization for its registration by Mr Chudobiński did not violate the provisions of the Articles of Association. Mr Teodorczyk filed a complaint against this decision.
The Voivodeship Administrative Court in Warsaw in its judgment of 16 June 2011 case file VI SA/Wa 617/11 dismissed it. The Court ruled that Mr Teodorczyk did not prove that Mr Chudobiński wanted to block business activities of Mr Teodorczyk for the reason that he has registered the disputed mark. The VAC noted also that Polish law provides that a right of protection will not be granted for a trade mark in respect of identical or similar goods, if the trade mark is identical or similar to a trade mark which, before the date according to which priority to obtain a right of protection is determined, has been well-known and used as a trade mark in respect of the goods of another party. However, this trade mark has to be well-known on the whole territory of the Republic of Poland or on a substantial part of it. The recognition and knowledge of the trade mark only in less than a significant part of the Polish territory, even if it is intense, does not create the right to a well-known trade mark. Knowledge of the trade mark in one city and its surroundings, even if it’s a large one, is not enough for the sign to be regarded as a well-known trade mark.
Categories: Art. 131(1)(i) IPL | Art. 131(2)(i) IPL | Art. 132(1)(ii) IPL | bad faith | company name or firm | personal rights or interests | Polish Act on Industrial Property Law | trade mark opposition | trademark law | Voivodeship Administrative Court | well known trade marks.
Polska Agencja Fotograficzna Studio 69 filed a notice of opposition to a final decision of the Patent Office on the grant of a right of protection for STUDIO 69 R-182300 trade mark owned by Marcin Maculewicz from Kielce. PAF claimed that the phrase STUDIO 69 was widely known and used by PAF as its trade mark. PAF also argued that according to 15 years of its business practice one can successfully operate on the media market without reserving or registering a brand name, and STUDIO 69 is a common sign that is also used widely by many companies. At the same time PAF did not claim infringement of the company name and explained that different entrepreneurs use such a sign.
The Polish Patent Office ruled that it is the duty of the opposing party to prove that a given sign is well known and is associated with products coming from the opponent. This should be demonstrated at the filing date of an application for the registration of a trade mark. The PPO explained that the well known sign is characterized by two elements. The first one is related to the function of marking the origin of goods/services (the distinctive function). A sign must have this feature in order to be registered as a trade mark. The second element is the requirement that a trade mark has became commonly known as a result of the use. According to the Polish case law and legal doctrine, a well known sign should be recognized in most of the territory, by more than half of potential purchasers of the goods. The basic criteria for assessing the objective possibility to become a well known trade mark include: the period of time of trade mark use, the situation of goods on the market (quantity, availability, method and scope of distribution), advertising campaigns and the strength/distinctive character of a trade mark. The PPO examined the evidence presented and reminded that common knowledge is assessed in terms of knowledge among potential customers. The PPO ruled that PAF has not demonstrated that more than 50% of potential customers on the Polish territory is familiar with STUDIO 69 trade mark and decided to dismiss the opposition. PAF filed a complaint against this decision.
The Voivodeship Administrative Court in its judgment of 14 October 2010 case file VI SA/Wa 1345/10 dismissed the case. The Court ruled that the Administrative Court, as a rule, does not carry out hearing of evidence, because the examination of legality of an administrative decision is based on the evidence gathered in the proceeding before an administrative authority (in this case the PPO) issuing the contested decision. According to Polish legal commentators, in principle, there are three sources of trademark protection within the industrial property law: the grant of a right of protection for a trademark (in the form of an administrative decision issued by the PPO), the use of a trade mark and common knowledge of a sign. The Court cited W. Włodarczyk, The distinctive ability of a trade mark, Lublin 2001, p. 28. The VAC held that PAF did not prove that STUDIO 69 was a well known sign. The judgment is not final yet.
Categories: Art. 106 §3 PBAC | Art. 132(1)(ii) IPL | Art. 133 §1 PBAC | Art. 246 IPL | Art. 255 IPL | company name or firm | personal rights or interests | Polish Act on Industrial Property Law | Polish Act on Proceedings Before Administrative Courts | trade mark invalidation | trademark law | Voivodeship Administrative Court | well known trade marks.
Kraft Foods Polska Spółka Akcyjna from Warsaw, the owner of PRINCE POLO R-148617 trade mark gave a reasoned notice of opposition to a final decision of the Patent Office on the grant of a a right of protection to MARCO POLO R-174796 trade mark that was applied for by Zakłady Przemysłu Cukierniczego MIESZKO S.A. for goods in class 30.
Kraft Foods claimed that there is a risk of confusion between these trade marks, which is the result of the similarity of the compared signs and the identity of the goods. Kraft also submitted evidence to prove the reputation of PRINCE POLO trade mark. Mieszko argued that the signs are dissimilar because the graphic/figurative element of these marks is essential, and verbal elements are blurred or faint and even minor. Mieszko also found arguments of POLO PRINCE reputation very questionable, because even Kraft indicated that the goods for which its trade marks are registered marks are cheap and directed for the mass consumer.
The Polish Patent Office (PPO) In a decision of 23 April 2009, ruled that the same element POLO does not determine the similarity between both signs, because the differences occurring in the conceptual aspect rule out the risk of consumer confusion as to the origin of goods. The PPO held that contrary to the Kraft’s arguments, Marco Polo sign will primarily be associated by purchasers of goods with a famous explorer, because it is simply his name. However, PRINCE POLO sign, regardless of how it can be translated into Polish, is not used to identify a specific person and it is not a proper name. Despite the recognition of Kraft’s trade marks on the Polish market, the average consumer will associate MARCO POLO in the first place with a person of a traveler rather than as Kraft claimed with its PRINCE POLO trade marks. Therefore, the PPO rejected the notice of opposition. Kraft filed a complaint to the administrative court.
The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 11 February 2010, case file VI SA/Wa 1988/09, agreed with the PPO’s assessment of the similarity and ruled that since the signs are not similar then the discussion about using someone else’s reputation is not justified. Dissimilar signs cannot cause association in consumer’s mind, so there can be no question of imitation, and conscious deriving of benefits from someone else’s reputation.
Kraft filed a cassation complaint to the Supreme Administrative Court. See “Trade mark law, case II GSK 746/10“.
Categories: Art. 132(1)(ii) IPL | Art. 132(2)(ii) IPL | Art. 132(2)(iii) IPL | Art. 8(1) TMA | Art. 9(1)(i) TMA | bad faith | case law | Polish Act on Industrial Property Law | Polish Act on Trade marks | Polish Patent Office | reputed trade marks | similarity of signs | Voivodeship Administrative Court.
The Voivodeship Administrative Court in Warsaw in its judgment of 19 June 2008 case file VI SA/Wa 278/08 dismissed a complaint on the decision of the Polish Patent Office on the refusal to grant the right of protection for “clim PUR” Z-270334 trade mark applied for the goods in class 3. VALEO SERVICE société par actions simplifiée filed a cassation complaint.
The Supreme Administrative Court in its judgment of 3 June 2009 case file II GSK 1022/08 held that the Court is not alone entitled to precise (supplement or refine) of the allegations included in the cassation complaint, or making hypotheses in this regard, sanctioning so to say its deficiencies. The interpretation of the scope and direction of a complaint is also not permissible, because the cassation appeal should be drafted in a such way that there would be no questions of its interpretation.
Categories: Art. 107 §3 APC | Art. 132(1)(ii) IPL | Art. 151 PBAC | Art. 7 APC | Art. 77 APC | Art. 80 APC | likelihood of confusion | Polish Act on Industrial Property Law | Polish Act on Proceedings Before Administrative Courts | Polish Administrative Proceedings Code | Polish Supreme Administrative Court | similarity of goods | similarity of signs | trade mark refusal | trademark law | Voivodeship Administrative Court.