Trade mark decision

BL Number
O/144/05
Decision date
20 May 2005
Appointed Person
Mr Geoffrey Hobbs QC
Mark
PENGUIN/THE PENGUIN
Classes
07
Applicant
Home-Tek International Limited
Opponent
De'Longhi SpA
Opposition
Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b): - Appeal dismissed. Opposition failed.

Points Of Interest

  • See also Hearing Officer’s decision dated 25 August 2004 (BL O/262/04)

Summary

In his decision dated 25 August 2004 (BL O/262/04) the Hearing Officer decided that the opponent had not filed sufficient evidence to support its grounds of opposition under Sections5(3) and 5(4)(a) and dismissed these grounds. Under Section 5(2)(b) the Hearing Officer decided that the respective goods "steam cleaning apparatus" and "air conditioning apparatus" were not similar and therefore the opponent also failed on this ground. The appeal to the Appointed Person related only to the Section 5(2)(b) ground.

The opponent had appealed on the basis that the Hearing Officer had not considered the inter-relationship between the respective marks and goods and the Appointed Person considered that this submission had merit. In his view the respective goods were not so dissimilar that it was unnecessary to compare the respective marks because both sets of goods were engineered products; could be sold through the same outlets and used by the same customers. The Appointed Person therefore concluded that the goods were somewhat similar though he noted that the opponent had filed no evidence on the point to assist the Hearing Officer.

As regards the respective marks PENGUIN and The Penguin & device (applicant’s marks) and PINGUINO 2000 & PINGUINO and device (opponent’s marks) the Appointed Person noted that there were some similarities but the applicant’s marks were clearly English marks whereas the opponent’s marks were likely to be seen as Italian. Overall the Appointed Person concluded that in the absence of evidence from the opponent as regards the similarity of the respective goods, that despite some similarity of goods and marks, the public were unlikely to be confused. Opposition on this ground failed and appeal dismissed

Full decision O/144/05 PDF document80Kb