The Polish company Arenda Biuro Obrotu Nieruchomosci from Warsaw filed before the Polish Patent Office a request for invalidation of the right of protection of the trade mark ARENDA WOJCIECHOWSCY R-178655, which was registered in classes 35, 36, 37 and 42. The company from Warsaw claimed that there was a risk of confusion between the trade mark ARENDA WOJCIECHOWSCY and the trade mark ARENDA R-94766, which was applied for with an earlier priority on 3 November 1994 and registered on 27 March 1997 for services in class 36 for real estate agency and brokerage.

ARENDA S.C. from Czestochowa argued that claims based on article 132(2)(ii) of the IPL were unfounded because an assessment of the overall impression excludes the risk of confusion as regards the disputed trade marks

2. A right of protection for a trade mark shall not be granted, if the trade mark:
(ii) is identical or similar to a trade mark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking association with the earlier mark,

The company argued that both signs have different graphics, which clearly distinguishes them. Another argument was that the PPO had already registered six different trade marks with the ARENDA element.

Despite the fact that, in the Polish language, “arenda” formely meant “lease” or “tenancy”, the PPO had invalidated the right of protection for a trade mark in part – in class 36 in its decision of 27 October 2008 act signature Sp. 487/07.

Categories: Art. 132(2)(ii) IPL | descriptive character | likelihood of confusion | Polish Act on Industrial Property Law | Polish Patent Office | similarity of services | similarity of signs | trade mark invalidation | trademark law.