Trade mark decision

BL Number
Decision date
25 September 2004
Hearing Officer
Mr D Landau
The Penguin PENGUIN
Home-Tek International Limited
De'Longhi SpA
Sections 5(2)(b), 5(3) & 5(4)(a)


Section 5(2)(b) - Opposition failed

Section 5(3) - Opposition failed

Section 5(4)(a) - Opposition failed

Points Of Interest

  • The opponent appealed to the Appointed Person. In his decision dated 20 May 2005 the Appointed Person criticised some aspects of the Hearing Officer’s decision but went on to uphold his decision and dismissed the appeal (BL O/144/05).


The applicant's application in Class 7 was in respect of "steam cleaning apparatus" whereas the opponent’s registration of its mark 2000 PINGUINO (stylised) in Class 11 was in respect of "air conditioning apparatus".

The opponent filed evidence of use to support its grounds of opposition under Sections 5(3) and 5(4)(a) but this evidence established only that goods under the mark PINGUINO had been advertised in 1991 and there was no evidence to support the claim to use up to 2002 or to show that the opponent had a reputation, residual or otherwise, in its mark. The grounds of opposition under Sections 5(3) and 5(4)(a) thus failed.

Under Section 5(2)(b) the Hearing Officer compared the respective goods and decided that the purpose and use of the respective goods were completely different; nor were the goods in competition or complementary to each other. The Hearing Officer went on to find that the respective goods were not similar and that the ground of opposition under Section 5(2)(b) also failed.

Full decision O/262/04 PDF document75Kb