The Supreme Administrative Court in its judgment of 28 August 2009 case file II FSK 412/08 held that in case of depreciation of trade mark rights in tax practice, according to the established case-law, it is assumed that the trade mark rights are meant only as rights to a registered trade mark, i.e. sign, in respect of which a right of protection has been granted by the Polish Patent Office. Unregistered trade marks, including the application for trade mark registration, are not deemed as such rights. Only after the registration of such a trade mark, it may be entered in the register of intangible assets and then depreciated for tax purposes.
Archive for: Art. 10 TMA
Tax law, case II FSK 412/08
August 8th, 2010, Tomasz RychlickiTrade mark law, case VI SA/Wa 845/05
June 9th, 2008, Tomasz RychlickiThe Company Valentino filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection for Valentino R-137628 trade mark that was registered in Classes 35, 39 for Orzechowski Wiesław Firma ASTRO from Gdynia. Valentino argued that Astro infringed on the principles of social coexistence, as it sought to use the reputation of the trademarks and trade names owned by Valentino. Granting the right of protection, thus placing on the same field of economic activity a very similar trade mark would threaten the interests of Valentino, and it would be also contrary to the institution of a trade mark.
The PPO dismissed the opposition and ruled that Valentino did not prove the reputation of its trade marks and due to the different classes there is no risk of consumers confusion, however the goods and services are complementary. The PPO noted also that the questioned trade mark differs from these owned by Valentino because elements such as V, Val, or Zone are exposed which makes them the dominant elements in these trade marsk, and they attract the attention of the public, turning their attention from the less visible Valentino word. Valentino filed a complaint against this decision.
The Voivodeship Administrative Court in its judgment of 8 November 2005 case file VI SA/Wa 845/05 overturned the decision and held it unenforceable. The VAC ruled that the most visible element in all trade marks in this case is the word Valentino, and verbal elements have the dominant position. The Court also noted that reputation of a trade mark is not dependent on the borders of individual countries or regions. The PPO should examine the evidence submitted by Valentino and it should assess the impact of the existence of a foreign reputed trade mark for its operation in Poland because Valentino could be uninterested of its expansion into the Polish territory, and in the situation if it were interested it could be overtaken by unauthorized entry. The Court agreed also that there was an infringement of the company name.