OPPOSITION DIVISION

OPPOSITION No B 2 417 312

PMC Group Aktiebolag, Drottninggatan 7, 252 21 Helsingborg, Sweden (opponent),

represented by Mannheimer Swartling Advokatbyrå, Box 2235, 403 14 Göteborg,

Sweden (professional representative)

a g a i n s t

Fronius International GmbH, Vorchdorfer Strasse 40, 4643 Pettenbach, Austria

(holder), represented by Sonn & Partner Patentanwälte, Riemergasse 14, 1010

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of international registration

designating the European Union No 1 196 514 ‘PMC’. The opposition is based on

European Union trade mark registration No 8 237 471 . The opponent

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 the conflicting signs, and the relevant public.

Decision on Opposition No B 2 417 312 page: 2 of 4

a) The goods and services

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

Class 7: Hydraulic motors; hydraulic mechanisms, hydraulic machines, hydraulic

instruments; Hydraulic pumps; Hydraulic valves; hydraulic tools; hydraulic cylinders;

pump engine couplings for hydraulic products ;test equipment for hydraulic products;

measuring mouthpieces and pipes for hydraulic products; pressure gauges for

hydraulic products; pressure switches and transmitters for hydraulic products; base

plates for hydraulic products; screw cartridge valves for hydraulic products; oil-

storage tanks for hydraulic products; valve panels for hydraulic products; hydraulic

accumulators, hydraulic fluid accumulators; hydraulic pipes, hydraulic tube

assemblies; hydraulic hose assemblies; machine filters, filters for industrial purposes,

filters for lubricants, hydraulic filters; strainers and indicators for hydraulic filters;

hydraulic control devices, equipment and tools for machines, machine tools, robots,

compressors, installations, motors and engines, valves and turbines; hydraulic

absorbers; pneumatic control instruments and control devices; pneumatic door

systems; pneumatic grippers and holders; pneumatic conveyors and transport

devices; pneumatic control instruments and control devices for automatic valves;

lubrication machines and lubrication pumps; lubrication filters; lubrication valves;

lubrication dispensers; lubrication accumulators; lubrication coolers; lubrication

sensors; electric motors; electric controls for machines, machine tools, motors and

engines; gear boxes for transmissions; couplings for transmissions; brakes for

transmissions; components and accessories for all the aforesaid goods.

Class 9: Electric control devices for hydraulic products; electric; control instruments

and control devices; components and accessories for all the aforesaid goods.

Class 37: Hydraulic construction services; lubrication of hydraulic instruments;

lubrication of pneumatic instruments; refurbishment, maintenance and servicing of

hydraulic products, tools and machines; refurbishment, maintenance and servicing of

pneumatic products, tools and machines; refurbishment, maintenance and servicing

of gear boxes, couplings and brakes for transmissions; lubrication services;

assembly of hydraulic products; engineering with regard to hydraulic products.

Decision on Opposition No B 2 417 312 page: 3 of 4

The contested goods are the following:

Class 7: Arc or laser welding equipment (not for medical purposes); arc welding

apparatus, in particular MIG or MAG welding apparatus.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,

sales outlets, the producers, the method of use and whether they are in competition

with each other or complementary to each other.

In addition, it should be noted that the term ‘in particular’, 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 contested goods are welding apparatus or equipment, that is, apparatus or

equipment that joins materials, usually metals or thermoplastics, by causing fusion.

engineering and assembly services in relation to the abovementioned goods.

In the light of the aforesaid, it is clear that the contested goods and the opponent’s

goods and services have nothing relevant in common. Although the opponent’s

goods include apparatus and instruments, this fact is not sufficient to consider that

they have the same nature as the contested welding apparatus and equipment, since

none of the opponent’s goods is likely to create fusion by heat.

In addition, none of the opponent’s goods and services has the purpose of joining

materials, as do the contested goods. Moreover, the contested goods and the

opponent’s goods and services do not have the same distribution channels and they

do not usually come from the same undertakings. Finally, they are neither in

Consequently, what does not follow from the evidence/arguments submitted by the

parties or is not commonly known should not be speculated on or extensively

investigated ex officio (09/02/2011, T-222/09, Alpharen, EU:T:2011:36, § 31-32). This

follows from Article 95(1) EUTMR, according to which, in opposition proceedings, the

Office is restricted in its examination to the facts, evidence and arguments provided

by the parties and the relief sought.

Decision on Opposition No B 2 417 312 page: 4 of 4

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a

condition for a finding of likelihood of confusion. Since the goods and services are

clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not

bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the holder in

the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)

and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the

holder are the costs of representation, which are to be fixed on the basis of the

maximum rate set therein.

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.

The amount determined in the fixation of the costs may only be reviewed by a

decision of the Opposition Division on request. According to Article 109(8) EUTMR