OPPOSITION No B 3 049 230

Manitowoc Foodservice Companies, LLC, 2400 South 44th Street, 54221-0066 Manitowoc, United States of America (opponent), represented by Rapisardi Intellectual Property Limited, 2A Collier House, 163/169 Brompton Road, SW3 1PY London, United Kingdom (professional representative)

a g a i n s t

Rehau-Behr, Bavne Allé 34, Hadsten, Denmark (applicant), represented by Gorrissen Federspiel Advokatpartnerselskab, Silkeborgvej 2, 8000 Aarhus C, Denmark (professional representative).

On 23/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 230 is partially upheld, namely for the following contested goods:

Class 11: Covers and lids especially adapted for commercial refrigeration units, freezers, refrigerated food display apparatus and refrigerated sales counters; parts and fittings for the abovementioned goods.

Class 20: Construction kits (sold complete) consisting of parts to be fitted in commercial chest freezers; combined lids for containers [non-metallic and not for household or kitchen use], including lids for refrigeration units and freezer; parts and fittings for the abovementioned goods.

2. European Union trade mark application No 17 587 916 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 587 916 for the word mark ‘MULTIPLEX’, namely against all the goods in Classes 11 and 20. The opposition is based on European Union trade mark registration No 9 900 201 for the word mark ‘MULTIPLEX’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of conflicting signs, and the relevant public.

a) The goods

The goods on which the opposition is based are the following:

Class 7: Carbonators.

Class 11: And non-refrigerated and/or heated beverage dispensers and parts thereof; refrigerated beverage dispensers and parts thereof; dispensing faucets for beverage dispensers and parts thereof.

The contested goods are the following:

Class 11: Covers and lids especially adapted for commercial refrigeration units, freezers, refrigerated food display apparatus and refrigerated sales counters; parts and fittings for the abovementioned goods.

Class 20: Kits of parts [sold complete] for assembly into display cases; construction kits (sold complete) consisting of parts to be fitted in commercial chest freezers; kits of parts [sold complete] for assembly into articles of furniture; transparent doors (Non-metallic -) for furniture; transparent doors of glass for furniture; glass furniture; doors made of glass for furniture; runners (Non-metallic -) for sliding doors; frames; combined lids for containers [non-metallic and not for household or kitchen use], including lids for refrigeration units and freezers; parts and fittings for the abovementioned goods.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 11

The contested covers and lids especially adapted for commercial refrigeration units, freezers, refrigerated food display apparatus and refrigerated sales counters; parts and fittings for the abovementioned goods overlap with the opponent’s parts of refrigerated beverage dispensers. Therefore, they are identical.

Contested goods in Class 20

The contested construction kits (sold complete) consisting of parts to be fitted in commercial chest freezers; combined lids for containers [non-metallic and not for household or kitchen use], including lids for refrigeration units and freezers; parts and fittings for the abovementioned goods are similar to the opponent’s refrigerated beverage dispensers and parts thereof. These goods may have the same commercial origin and be directed at the same relevant public through the same distribution channels.

The contested kits of parts [sold complete] for assembly into display cases; kits of parts [sold complete] for assembly into articles of furniture; transparent doors (Non-metallic -) for furniture; transparent doors of glass for furniture; glass furniture; doors made of glass for furniture; runners (Non-metallic -) for sliding doors; frames; parts and fittings for the abovementioned goods are dissimilar to the opponent’s goods. They have a different nature, they have different purposes and can also have different methods of use, and they do not coincide in distribution channels or producers. They are neither complementary nor in competition.

b) The signs

MULTIPLEX	MULTIPLEX
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The signs are identical and some of the contested goods, namely covers and lids especially adapted for commercial refrigeration units, freezers, refrigerated food display apparatus and refrigerated sales counters; parts and fittings for the abovementioned goods in Class 11, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods. Although Article 8(1)(a) EUTMR was not invoked by the opponent, the grounds under Article 8(1) EUTMR are so closely related that an opponent’s claim to likelihood of confusion is construed as also being a claim for double identity and vice versa.

Furthermore the contested construction kits (sold complete) consisting of parts to be fitted in commercial chest freezers; combined lids for containers [non-metallic and not for household or kitchen use], including lids for refrigeration units and freezers; parts and fittings for the abovementioned goods were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must be upheld for these goods.

It follows from the above that the contested mark must be rejected for the goods found to be identical or similar to those of the earlier mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed to these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

Helen Louise MOSBACK

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.