Trade mark decision

BL Number

O/262/04

Decision date

25 September 2004

Hearing Officer

Mr D Landau

Mark

The Penguin PENGUIN

Applicant

Home-Tek International Limited

Opponent

De'Longhi SpA

Opposition

Sections 5(2)(b), 5(3) & 5(4)(a)

Result

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).

Summary

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 75Kb