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
Wien, Austria (professional representative).
On 22/11/2017, the Opposition Division takes the following
1. Opposition No B 2 417 312 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK — APPLICABLE REGULATIONS
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
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
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 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;
hydraulic actuators; adapters for hydraulic products; coupling devices for hydraulic
products; pipe clips for hydraulic products; seals for hydraulic products; oil coolers
and oil heaters for hydraulic products; oil-storage tanks and pump engine
accessories for hydraulic products; ventilators for hydraulic products; oil-level gauges
for hydraulic products; covers for oil-storage tanks for hydraulic products; shock
absorbers for hydraulic products; blast covers and consoles for hydraulic products;
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
operational control modules and hydraulic operational control installations; hydraulic
control installations; hydraulic check valves; hydraulic control instruments and control
devices for machines, motors and engines and apparatus; hydraulic control modules;
pneumatic cylinders; pneumatic air tools; pneumatic compressors; industrial
pneumatic tools, pneumatic tools; pneumatic machinery; pneumatic motors and
engines; pneumatic bellows; pneumatic vacuum products; pneumatic shock
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 12: Electric motors and engines for instruments for land transport; electric
controls for land vehicle motors and engines; electric controls for land vehicles; gear
boxes for transmissions; couplings for transmissions; brakes for transmissions;
components and accessories for all the aforesaid goods.
Class 17: Hydraulic hoses; hydraulic seals and gaskets; pneumatic hoses; lubrication
hoses; 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,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
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.
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.
The opponent’s goods are hydraulic, pneumatic and lubrication devices (Class 7);
electrical devices, instruments and components (Class 9); electric motors and
engines and their fittings and components (Class 12); and hoses, seals and gaskets,
as well as components and accessories thereof (Class 17). The opponent’s services
are lubrication services, as well as construction, refurbishment, maintenance,
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
competition nor complementary. Therefore, they are dissimilar.
It should be noted that the degree of similarity of the goods and services is a matter
of law, which must be assessed ex officio by the Office even if the parties do not
comment on it. However, the Office’s ex officio examination is restricted to well-
known facts, that is to say, ‘facts which are likely to be known by anyone or which
may be learned from generally accessible sources’, which excludes facts of a highly
technical nature (03/07/2013, T-106/12, Alpharen, EU:T:2013:340, § 51).
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
fulfilled, and the opposition must be rejected.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
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.
The Opposition Division
Marine DARTEYRE Ferenc GAZDA
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
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.