62006TJ0303(01)_EN
Parties
Grounds
Operative part
Parties
In Joined Cases T‑303/06 RENV and T‑337/06 RENV,
UniCredit SpA, formerly UniCredito Italiano SpA, established in Genoa (Italy), represented by G. Floridia, R. Floridia and G. Sironi, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),
represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being,
Union Investment Privatfonds GmbH,
established in Frankfurt am Main (Germany), represented by J. Zindel, lawyer,
ACTIONS brought against the decisions of the Second Board of Appeal of OHIM of 5 September 2006 (Joined Cases R 196/2005-2 and R 211/2005-2) and of 25 September 2006 (Joined Cases R 456/2005-2 and R 502/2005-2), concerning opposition proceedings between Union Investment Privatfonds GmbH and UniCredito Italiano SpA,
THE GENERAL COURT (First Chamber),
composed of H. Kanninen, President, I. Pelikánová and E. Buttigieg (Rapporteur), Judges,
Registrar: J. Plingers, Administrator,
having regard to the written procedure and further to the hearing on 17 January 2014,
gives the following
Grounds
Judgment
Background to the dispute
1. On 29 May and 7 August 2001, the applicant, UniCredit SpA, formerly UniCredito Italiano SpA, filed two Community trade mark applications at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2. The marks for which registration was sought are the word signs UNIWEB and UniCredit Wealth Management.
3. The services for which registration was sought fall within Class 36 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and are described as follows:
– ‘Banking business; financial affairs; monetary affairs; insurance; real estate affairs; financial and insurance consultancy and information; credit/debit card services; banking and financial services via the Internet’, for the UNIWEB word mark;
– ‘Banking business; financial affairs; monetary affairs; insurance; real estate affairs; financial information’, for the UniCredit Wealth Management word mark.
4. Those applications for Community trade marks were published in Community Trade Marks Bulletins
Nos 108/2001 of 17 December 2001 and 24/2002 of 25 March 2002 respectively.
5. On 6 March and 21 June 2002, the intervener Union Investment Privatfonds GmbH, gave notice of opposition, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to the registration of the marks applied for in respect of the services referred to in paragraph 3 above.
6. The two oppositions were based on the following earlier rights:
– the German word mark UNIFONDS, filed on 2 April 1979 and registered on 17 October 1979 under No 991995 for services in Class 36 corresponding to the following description: ‘fund investments’;
– the German word mark UNIRAK, filed on 2 April 1979 and registered on 17 October 1979 under No 991997 for services in Class 36 corresponding to the following description: ‘fund investments’;
– the German figurative trade mark, filed on 6 March 1992 and registered on 10 July 1992 under No 2016954 for services in Class 36 corresponding to the following description: ‘fund investments’, as represented below:
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7. The grounds relied on in support of the oppositions were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8. At the applicant’s request, the intervener was invited, on 10 January and 24 April 2003, to furnish proof of genuine use of the earlier marks.
9. By decisions of 17 December 2004 and 28 February 2005, the Opposition Division upheld the oppositions brought against the registration of the marks applied for in respect of the services covered by them except for ‘real estate affairs’, in respect of which the oppositions were rejected.
10. With regard to both applications, the Opposition Division considered, first of all, that the intervener had furnished proof of genuine use of the earlier marks in Germany for the services for which they were registered. Next, it concluded that the services covered by the mark applied for were similar to those covered by the earlier trade marks, with the exception of ‘real estate affairs’. Moreover, according to the Opposition Division, the intervener had also furnished proof of the fact that it was the proprietor of trade marks each containing the prefix ‘uni’ and constituting a series or family of trade marks. Next, it considered that the structure of the trade marks applied for was similar to that of the earlier trade marks, which combined the prefix ‘uni’ with descriptive elements or elements of limited distinctive character. It concluded that there was a likelihood that German consumers would think that the marks applied for belonged to the intervener’s family of marks containing the prefix ‘uni’ and covering the services of ‘fund investments’. The Opposition Division accordingly concluded that there was a likelihood of confusion, including a likelihood of association, on the part of consumers in Germany, in connection with the services which it regarded as similar.
11. On 17 February and 21 April 2005, the applicant filed notices of appeal with OHIM against the Opposition Division’s decisions, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
12. On 11 February and 28 April 2005, the intervener filed notices of appeal with OHIM against the Opposition Division’s decisions, pursuant to Articles 57 to 62 of Regulation No 40/94.
13. By decisions of 5 and 25 September 2006 (‘the contested decisions’) the Second Board of Appeal of OHIM upheld the decisions of the Opposition Division and dismissed the applicant’s appeals and those of the intervener.
14. First of all, the Board of Appeal held that the Opposition Division had rightly concluded that the intervener had furnished proof of genuine use of the earlier marks in Germany for ‘fund investments’.
15. Secondly, the Board of Appeal held that, since the earlier marks were registered and used in Germany in respect of ‘fund investments’ services, the relevant public was made up of consumers in that Member State with a relatively high level of attention.
16. Thirdly, the Board of Appeal confirmed the finding of the Opposition Division that, with the exception of ‘real estate affairs’, the services covered by the marks applied for were similar to the ‘fund investments’ services covered by the earlier marks.
17. Fourthly, the Board of Appeal held that the intervener had furnished evidence of the existence of a family of trade marks belonging to it and that the relevant public associated the prefix ‘uni’ with the intervener when it was used in relation to fund investments. The Board of Appeal also considered that the marks applied for had characteristics that could link them, within the meaning of the judgment in Case T‑194/03 Il Ponte Finanziaria
v OHIM — Marine Enterprise Projects (BAINBRIDGE)
[2006] ECR II‑445, to the series of marks belonging to the intervener, inasmuch as the marks applied for and the earlier marks had the same structure and their common element, ‘uni’, had distinctive character for the German public and in relation to the services covered, given its inherent qualities and the use that was made of it. With regard to the mark applied for UniCredit Wealth Management, the Board of Appeal emphasised that the terms ‘wealth’ and ‘management’ were commonly used in Germany to refer to services in the finance and investment field and that, consequently, that combination of words was devoid of any distinctive character in relation to the services applied for. Consequently, the Board of Appeal considered that the trade marks at issue were formed by signs that presented visual, phonetic and conceptual similarities, inasmuch as they were identical in so far as concerned their initial element, which identified the intervener in the eyes of the relevant public.
18. On the basis of those considerations, the Board of Appeal concluded that there was a likelihood of confusion between the trade marks at issue, in so far as concerned the mark applied for UNIWEB, with respect to services covered by that mark, namely ‘banking business; financial affairs; monetary affairs; insurance; financial and insurance consultancy and information; credit/debit card services; banking and financial services via the Internet’ and, in so far as concerned the mark applied for UniCredit Wealth Management, with respect to services covered by that mark, namely ‘banking business; financial affairs; monetary affairs; insurance; financial information’, which it regarded as being similar to the ‘fund investments’ covered by the earlier marks. On the other hand, it found there to be no such likelihood of confusion in so far as concerned ‘real estate affairs’, which, according to the Board of Appeal, were not similar to ‘fund investments’.
Proceedings before the General Court and the Court of Justice
19. By applications lodged at the Registry of the General Court on 6 and 28 November 2006, the applicant brought actions for the annulment of the contested decisions. It stated, during the hearing before the General Court on 15 September 2009, that its actions sought partial annulment only of those decisions, in so far as they upheld the oppositions brought against the registration of the word signs UNIWEB and UniCredit Wealth Management as Community trade marks in respect of the services in Class 36 of the Nice Agreement other than ‘real estate affairs’.
20. By judgment of 27 April 2010 in Joined Cases T‑303/06 and T‑337/06 UniCredito Italiano
v OHIM  — Union Investment Privatfonds (UNIWEB and UniCredit Wealth Management), not published in the ECR, (‘the judgment of the General Court’), the General Court joined Cases T‑303/06 and T‑337/06 for the purposes of the judgment, in accordance with Article 50 of its Rules of Procedure, and annulled the contested decisions in so far as they had dismissed the applicant’s appeals by upholding the oppositions to the registration of the trade marks applied for with regard to the services in Class 36 other than ‘real estate affairs’. It also dismissed the intervener’s applications for partial annulment and alteration, submitted in accordance with Article 134(3) of the Rules of Procedure, and ordered each party to bear its own costs.
21. In reaching that conclusion, the General Court accepted the single plea put forward by the applicant, alleging infringement of Article 8(1)(b) of Regulation No 40/94. Referring to its judgment in BAINBRIDGE, cited in paragraph 17 above, the General Court held that the Board of Appeal had not carried out a thorough examination of the requirement of connection of the trade marks applied for with the series of earlier marks. It held, in substance, that the prefix ‘uni’, by itself, did not have the inherent capacity to bring about the association of the trade marks applied for with the series cited and that no other aspect of the comparison between the trade marks at issue made it possible to conclude that there was a likelihood of confusion.
22. By application lodged at the Registry of the General Court on 1 July 2010, the intervener brought an appeal under Article 56 of the Statute of the Court of Justice of the European Union against the judgment of the General Court (cited in paragraph 20 above). In its appeal, the intervener claimed that the Court should set aside that judgment and dismiss the actions brought by the applicant before the General Court. It also claimed that the Court should annul the contested decisions in so far as they had dismissed its oppositions to the registration of the UNIWEB and UniCredit Wealth Management trade marks for ‘real estate affairs’, and that those oppositions should be upheld.
23. By judgment of 16 June 2011 in Case C‑317/10 P Union Investment Privatfonds v UniCredito Italiano [2011] ECR I‑5471, (‘the judgment on appeal’), the Court of Justice set aside the judgment of the General Court (cited in paragraph 20 above).
24. The Court held that the General Court had made errors of law.
25. First of all, the Court of Justice held that the General Court had distorted the content of the contested decisions by finding that the Board of Appeal had concluded that there was a connection between the marks applied for and the series of marks cited by the intervener almost automatically and without thorough examination, and that it had failed to state sufficient grounds for its judgment by failing to examine aspects on which the Board of Appeal had made assessments. Moreover, the General Court had applied Article 8(1)(b) of Regulation No 40/94 incorrectly in that it had excluded the existence of a likelihood of confusion without taking into consideration all of the factors relevant to verifying, specifically, whether there was a risk that the relevant public might believe that the trade marks applied for were part of the series of trade marks cited by the intervener and thus be mistaken as to the origin of the services at issue, believing that they originated from the same undertaking or from economically linked undertakings.
26. The Court of Justice referred the cases back to the General Court to rule again on the actions brought before it by the applicant and on the applications for partial annulment and alteration of the contested decisions brought by the intervener.
27. Following the judgment on appeal (cited in paragraph 23 above) and in accordance with Article 118(1) of the Rules of Procedure, the cases were assigned to the First Chamber of the General Court.
28. The parties were invited to submit observations, in accordance with Article 119(1) of the Rules of Procedure. The applicant and the intervener lodged their observations within the prescribed period. OHIM informed the Court that it did not intend to lodge observations.
29. By order of the President of the First Chamber of the General Court of 7 November 2013, the present cases were joined for the purposes of the oral procedure and the judgment, in accordance with Article 50 of the Rules of Procedure.
30. By order of 12 June 2014, the Court decided to reopen the oral procedure and to invite the parties to answer certain questions. The parties complied with that request within the prescribed period.
Forms of order sought by the parties to the proceedings following the referral back to the General Court
31. In its observations, the applicant claims that the Court should:
– rule again on the applications lodged at the Registry of the General Court on 6 and 28 November 2006 and uphold those actions, stating reasons for its judgment in accordance with the indications given by the Court of Justice;
– order the intervener to pay the costs.
32. In its observations, the intervener contends that the Court should:
– dismiss the actions;
– uphold the oppositions made to the registration of the UNIWEB and UniCredit Wealth Management trade marks, including with respect to ‘real estate affairs’.
Law
1. Preliminary observations
33. At the hearing on 17 January 2014, the applicant confirmed that, by the head of claim put forward in its observations following the referral back to the General Court and calling on the Court to rule again on the actions and to uphold them, it seeks partial annulment of the contested decisions in so far as they upheld the oppositions brought against the registration of the word signs UNIWEB and UniCredit Wealth Management as Community trade marks in respect of the services in Class 36 of the Nice Agreement other than ‘real estate affairs’, as it had claimed in its actions.
34. The intervener confirmed, also at the hearing on 17 January 2014, that by the head of claim set out in its observations following the referral back to the General Court and calling on the Court to uphold the oppositions made to the registration of UNIWEB and UniCredit Wealth Management as Community trade marks, including with respect to ‘real estate affairs’, it seeks, first, the partial annulment of the contested decisions in so far as they dismissed the oppositions brought against the registration of the UNIWEB and UniCredit Wealth Management trade marks in respect of the ‘real estate affairs’ services covered by the trade mark applications and, secondly, the alteration of those decisions.
2. Admissibility of certain annexes to the applications
35. Both OHIM and the intervener contest the admissibility of certain annexes to the applications on the ground that the documents were produced for the first time before the General Court.
36. The Court would observe in this connection that the annexes in question consist in print-outs of the results of searches carried out in the German commercial register concerning, in substance, companies operating in the financial sector whose names contain the element ‘uni’. Those documents were produced by the applicant in order to demonstrate that, as a result of its frequent use, this element is devoid of any distinctive character in the financial services sector.
37. Those documents, produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009), so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded, without it being necessary to assess their probative value (see, to that effect, Case T‑346/04 Sadas
v OHIM — LTJ Diffusion (ARTHUR ET FELICIE)
[2005] ECR II‑4891, paragraph 19 and the case-law cited).
3. Substance
38. In support of their respective applications, the applicant and the intervener each put forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94.
The plea put forward by the applicant, alleging infringement of Article 8(1)(b) of Regulation No 40/94
39. The applicant argues that the Board of Appeal erred in law in that it concluded that there was a likelihood of confusion arising from association between the marks applied for and the earlier marks considered as forming a series. According to the applicant, the conditions laid down in the case-law for the purposes of the extended protection of serial trade marks are not fulfilled in the present case.
40. OHIM and the intervener dispute the applicant’s arguments.
41. It must be recalled that Article 8(1)(b) of Regulation No 40/94 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Moreover, under Article 8(2)(a)(ii) of Regulation No 40/94 (now Article 8(2)(a)(ii) of Regulation No 207/2009), the term ‘earlier trade marks’ covers trade marks registered in a Member State, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
42. According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB
v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
43. It is also clear from the case-law that, when the opposition to a Community trade mark application is based on several earlier marks and those marks have characteristics which enable them to be regarded as forming part of a single series or family, which may be the case, inter alia, when they reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of a single prefix or suffix taken from an original mark, such a circumstance constitutes a relevant factor for the purpose of assessing whether there is a likelihood of confusion ( BAINBRIDGE, cited in paragraph 17 above, paragraph 123).
44. In such circumstances, a likelihood of confusion may be created by the possibility of association between the trade mark applied for and the earlier marks forming part of the series where the trade mark applied for displays such similarities to those marks as might lead the consumer to believe that it forms part of that same series and therefore that the goods covered by it have the same commercial origin as those covered by the earlier marks, or a related origin. Such a likelihood of association between the trade mark applied for and the earlier marks in a series, which could give rise to confusion as to the commercial origin of the goods identified by the signs at issue, may exist even where the comparison between the trade mark applied for and the earlier marks, each taken individually, does not prove the existence of a likelihood of direct confusion. In such a case, the likelihood that the consumer will mistake the commercial origin of the goods or services in question does not result from the possibility of his confusing the trade mark applied for with one of the earlier marks in a series, but from the possibility of his considering that the trade mark applied for forms part of the same series ( BAINBRIDGE, cited in paragraph 17 above, paragraph 124).
45. Furthermore, according to case-law, the presence of a series or family of trade marks is relevant to the assessment of the existence of a likelihood of confusion, arising from a risk that the mark applied for will be associated with the series, only if the common element of the marks at issue is distinctive. If, on the other hand, that element is descriptive, it is not apt to create a likelihood of confusion (Case T‑117/02 Grupo El Prado Cervera
v OHIM — Héritiers Debuschewitz (CHUFAFIT)
[2004] ECR II‑2073, paragraph 59, and judgment of 13 July 2012 in Case T‑255/09 Caixa Geral de Depósitos
v OHIM — Caixa d’Estalvis i Pensions de Barcelona (la Caixa), not published in the ECR, paragraph 81).
46. It is in the light of the foregoing considerations that the assessment by the Board of Appeal of the likelihood of confusion between the trade marks at issue must be examined.
The relevant public
47. As is recognised by the case-law, in the global assessment of the likelihood of confusion, account must be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It is also necessary to take into consideration the fact that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma
v OHIM — Altana Pharma (RESPICUR)
[2007] ECR II‑449, paragraph 42 and the case-law cited).
48. In the present case the Board of Appeal’s finding — which was not disputed by the parties — that the relevant public in respect of which the likelihood of confusion must be analysed is comprised of German consumers must be upheld, since the earlier marks are registered and used in Germany. Moreover, those consumers must be regarded as having a relatively high level of attention, since the services in question are services of a financial nature falling within Class 36 and having a certain economic importance for them, inasmuch as they concern their economic and financial assets (see, to that effect, la Caixa, cited in paragraph 45 above, paragraph 21 and the case-law cited).
The comparison of the services
49. It is clear from the contested decisions that neither the applicant nor the intervener challenged before the Board of Appeal the Opposition Division’s conclusion that the services ‘banking business; financial affairs; monetary affairs; insurance; financial and insurance consultancy and information; credit/debit card services; banking and financial services via the Internet’ covered by the mark applied for UNIWEB and the services ‘banking business; financial affairs; monetary affairs; insurance; financial information’ covered by the mark applied for UniCredit Wealth Management are similar to the ‘fund investments’ services covered by the earlier marks. By endorsing the Opposition Division’s decisions in their entirety, the Board of Appeal confirmed that finding, which, since it was not disputed by the parties in the proceedings before the General Court, must be upheld.
The comparison of the signs
50. The global assessment of the likelihood of confusion must be based, in so far as the visual, phonetic and conceptual similarity of the signs at issue is concerned, on the overall impression given by the signs, account being taken, inter alia, of their distinctive and dominant elements (Case C‑334/05 P OHIM
v Shaker
[2007] ECR I‑4529, paragraph 35 and the case-law cited).
51. The Board of Appeal found, in paragraphs 36 and 40 respectively of the contested decisions, that the marks at issue had the same structure in that they were formed from a combination of two verbal elements, that is to say, the prefix ‘uni’ followed by a different word in each case. It also concluded, at paragraphs 43 and 48 respectively of the contested decisions, that the signs at issue presented visual, phonetic and conceptual similarities, inasmuch as they were identical in so far as concerned their initial element. That finding is not disputed by the parties and must be upheld.
52. It should be noted in this connection that, while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C‑342/97 Lloyd Schuhfabrik Meyer
[1999] ECR I‑3819, paragraph 25), the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (see, to that effect, Case T‑356/02 Vitakraft-Werke Wührmann
v OHIM — Krafft (VITAKRAFT)
[2004] ECR II‑3445, paragraph 51). That case-law is equally applicable to the assessment of the relevant public’s perception of a figurative mark, such as UNIZINS in this instance, which is composed solely of a stylised verbal element.
53. The marks at issue are composed of the prefix ‘uni’ followed, without a space, by terms that are descriptive of the services covered or of limited distinctive character in relation to those services. Indeed, in response to a question posed by the Court, the applicant and the intervener stated that the element ‘rak’ contained within the earlier mark UNIRAK comprises the initial letters of the German words Renten and Aktien (‘bonds’ and ‘shares’) or Renten, Aktien and Kapital (‘bonds’, ‘shares’ and ‘capital’), which thus refer to the investment objectives and policies of the fund designated by that trade mark. Also, as the applicant confirmed during the administrative procedure, without being contradicted on the point by the intervener, the words ‘fonds’ and ‘zins’ joined to the prefix ‘uni’ in the earlier marks UNIFONDS and UNIZINS signify, respectively, investment ‘funds’ and ‘interest’. In so far as concerns the mark UniCredit Wealth Management, first of all, the term immediately attached to the prefix ‘uni’ refers to a common operation in the financial sector whereby a bank puts a sum of money at its client’s disposal. The fact that the terms ‘credit’ and ‘management’ belong to the English language does not mean that it is impossible for the relevant public to ascribe meaning to them in relation to the services covered. Indeed, first of all, the terms ‘credit’ and ‘management’ are similar to the German words ‘Kredit’ and ‘Management’, which have the same meaning. The term ‘fonds’ belongs to the German language and not, contrary to the applicant’s submission, the English language. Secondly, English is widely used and understood in the milieu in question, that is to say, in the financial services sector. Furthermore, as regards the terms ‘wealth’ and ‘management’, as the Board of Appeal rightly emphasised in paragraph 40 of the contested decision of 25 September 2006, those terms are commonly used in the financial sector, even in Germany, in connection with financial services such as investment consultancy services and accounting services. Lastly, as regards the term ‘web’, contained within the mark UNIWEB, the Opposition Division stated, without being contradicted on the point by the applicant, that it is a common abbreviation for the English expression ‘world wide web’, which refers to the global computer network, the Internet. Despite being an English word, it is very well known internationally as a result of the worldwide use of the Internet. Although the term does not directly refer to financial services, it may nevertheless be associated with them and may, for example, refer to online financial services or to investment services connected with the Internet sector. Consequently, the relevant public will break down the marks at issue into the element ‘uni’ and the other terms which follow it.
54. Thus, the marks at issue present a certain degree of similarity, both visually and phonetically, in that they all share the prefix ‘uni’. The fact that the elements joined to that prefix are different and that the trade mark UniCredit Wealth Management comprises three verbal elements rather than a single verbal element does not eliminate that similarity, given that consumers normally attach more importance to the beginning of words (Joined Cases T–183/02 and T–184/02 El Corte Inglés
v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR)
[2004] ECR II-965, paragraph 81). Moreover, from a phonetic point of view, the marks at issue, with the exception of UniCredit Wealth Management, comprise three syllables. In so far as concerns the mark UniCredit Wealth Management, the presence of the prefix ‘uni’ within the first verbal element permits the conclusion that it is to a certain extent similar to the earlier trade marks. Equally, there is a certain degree of conceptual similarity between the marks at issue in that their structures are very similar (see, to that effect, judgment of 26 September 2012 in Case T‑301/09 IG Communications
v OHIM — Citigroup and Citibank (CITIGATE), not published in the ECR, paragraph 78).
55. It is also appropriate to point out that, under the heading ‘Comparison of the signs’, the Board of Appeal examined whether the marks applied for had characteristics which would enable the relevant public to associate them with the family or series of earlier marks belonging to the intervener. However, it is clear from the case-law that, whilst the existence of a family or series of trade marks is an element which must be taken into account for the purposes of assessing the likelihood of confusion, it is irrelevant for the purposes of assessing the existence of a similarity between the marks at issue (Case C‑552/09 P Ferrero
v OHIM
[2011] ECR I‑2063, paragraphs 97 and 98).
56. That assessment of the Board of Appeal must therefore be examined in the context of the Court’s examination of the likelihood of confusion.
The likelihood of confusion
57. The Board of Appeal concluded that, in view of the similarity between the marks at issue and between the services covered by those marks, there was a likelihood of confusion arising from an association made by consumers between the marks applied for and the earlier marks forming part of a series belonging to the intervener.
58. It must be pointed out in this connection that the likelihood of association between the marks applied for and a series of earlier marks may be relied on only if two conditions are cumulatively satisfied. First, the proprietor of the series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a series. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series ( BAINBRIDGE, cited in paragraph 17 above, paragraphs 125 to 127).
59. The applicant maintains that neither of these conditions is fulfilled in the present case, inasmuch as the intervener failed to furnish proof of use of the marks belonging to the series and there is no possibility of association between the marks applied for and the series of earlier marks.
– Proof of the use of the earlier marks belonging to the series or family of trade marks
60. It must be recalled that, in order for there to be a likelihood of the public’s being mistaken as to whether the trade mark applied for belongs to a series, the earlier marks forming part of that series must necessarily be present on the market. Since taking into account the serial nature of the earlier marks would entail widening the scope of protection of the trade marks forming part of the series, considered individually, any assessment in the abstract of the likelihood of confusion, based solely on the existence of several registrations covering marks reproducing the same distinctive element, and in the absence of any actual use of the marks, must be regarded as excluded ( BAINBRIDGE, cited in paragraph 17 above, paragraph 126). Indeed, where there is a family or series of trade marks and the likelihood of confusion therefore results from the possibility that the consumer might be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for, considering, erroneously, that that trade mark is part of that family or series, proof of the use of a sufficient number of trade marks capable of constituting a family or series is particularly important, since no consumer can be expected, in the absence of such use, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element (see, to that effect, Case C‑234/06 P Il Ponte Finanziaria
v OHIM
[2007] ECR I‑7333, paragraphs 63 and 64). Consequently, failing proof of the use of a sufficient number of trade marks capable of constituting a family or series, any likelihood of confusion entailed by the appearance on the market of the trade mark applied for will have to be assessed by comparing each of the earlier marks, taken individually, with the trade mark applied for ( BAINBRIDGE, cited in paragraph 17 above, paragraph 126).
61. Confirming the decisions of the Opposition Division on this point, the Board of Appeal concluded, in paragraphs 20 and 24 respectively of the contested decisions, that the documents provided by the intervener established the genuine use of the earlier marks in Germany for the services ‘fund investments’.
62. In its written pleadings, the applicant argues in this connection that the intervener has not furnished sufficient evidence, such as might be constituted, inter alia, by consumer surveys, the results of ‘demoscopic studies’ or information regarding the reputation of the funds designated by the trade marks, to establish that the earlier marks are perceived by the relevant public as a series of marks or that the relevant public is capable of associating the mark applied for with those earlier marks regarded as the components of a series. Consequently, according to the applicant, the Board of Appeal made a fundamental error in concluding that the evidence of the use of the earlier marks was sufficient merely on the basis of one of the traditional criteria for applying Article 43(2) of Regulation No 40/94 (now Article 42(2) of Regulation No 207/2009) without requiring proof of ‘special use’ of the earlier marks as part of a series. Furthermore, the applicant complains that, in breach of Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009), the Board of Appeal failed to state the reasons for its decisions to the requisite legal standard in that it failed to take account, in its assessment of the proof of use of the earlier marks as part of the family or series of marks belonging to the intervener, of the relatively high level of attention of the relevant public. Lastly, the applicant maintains in its applications that the evidence furnished was, in any event, insufficient to prove use of the earlier marks, first, because the management reports provided by the intervener are internal documents and do not demonstrate any awareness of the earlier marks in the market and, secondly, because the press information relating to the investment funds illustrates how the securities have fared but does not prove that the trade marks have actually been used in the market.
63. At the hearing on 17 January 2014 the applicant admitted that it no longer disputed that the intervener had provided proof of the actual use of the earlier trade marks to which it referred in its oppositions, but insisted that the intervener had nevertheless failed to prove that the relevant public would perceive the earlier marks as a series or family of trade marks belonging to it.
64. OHIM and the intervener dispute the applicant’s arguments.
65. It must be recalled in this connection that it is clear from the case-law referred to in paragraph 60 that the proprietor of a series of earlier registrations must furnish proof of the actual use in the relevant market of the marks belonging to the series or, at the very least, of a number of marks capable of constituting a series, but not, as the applicant claims, of the fact that the marks are perceived by the relevant public as constituting a series or family.
66. It follows that the proprietor of earlier marks belonging to a series cannot be required to prove that, in addition to being present on the market, those earlier marks are also perceived by the relevant public as forming a series.
67. Contrary to what the applicant argued at the hearing on 17 January 2014, no other conclusion may be drawn from paragraph 124 of the judgment in BAINBRIDGE, cited in paragraph 17 above. Indeed, it is clear from that paragraph that the Court was referring to the consumer’s perception solely in order to recognise the existence, under the conditions which it proceeded to define, of a risk that consumers might associate the trade mark applied for with the earlier marks forming part of a series and thus believe that it belonged to the same series. It is not, however, apparent from the passage to which the applicant refers, or from any other passage in the judgment in question, that the Court required that the proprietor of a series of registrations should, in addition to proving the actual presence on the market of the marks forming part of that series, prove that the relevant public actually perceives the earlier marks as belonging to a series.
68. Consequently, the applicant’s argument that the intervener failed to prove that the relevant public perceives the earlier marks as forming a series is irrelevant. Similarly irrelevant is the argument by which the applicant alleges a failure to state reasons resulting from the Board of Appeal’s failure to take account, in its assessment of the proof of use of the earlier marks belonging to the series, of the relatively high level of attention of the relevant public.
69. Furthermore, as regards its argument that the earlier marks, which denote the names of the funds invested by the intervener, are not perceived by the investing public as forming a series of marks because the funds constitute one and the same product from a commercial point of view, the applicant stated at the hearing on 17 January 2014 that that argument was put forward in the alternative, in order to show that it would be easier to establish the existence of a family of trade marks if the marks designated different products, but that that was not an essential prerequisite for the existence of a family of marks. It is appropriate to point out in this connection that, regardless of whether the services covered by the earlier marks constitute a single product from a commercial point of view, as the applicant claims, or different products, in view of their very distinct financial and technical characteristics, as OHIM and the intervener claim, that matter is not relevant for the purposes of determining the existence of a family of marks belonging to the intervener since, as the applicant admitted at the hearing, the existence of a family of marks cannot depend on whether the marks having characteristics which enable them to be regarded as forming a family or series designate a single product or different products. It follows that the applicant’s argument is irrelevant.
70. It is apparent from the foregoing reasoning that the Board of Appeal was entitled to conclude that the first condition referred to in BAINBRIDGE, cited in paragraph 17 above, for establishing the existence of a likelihood of confusion arising from the association of the marks applied for with the series of earlier marks belonging to the intervener, that is to say, proof of actual use of the marks constituting a series, was fulfilled in this case.
71. It therefore remains to be considered whether the UNIWEB et UniCredit Wealth Management marks applied for display characteristics capable of associating them with the series of earlier marks belonging to the intervener and thus of creating confusion on the part of consumers as to the origin of the services which they designate.
– The likelihood of the marks applied for being associated with the series of earlier marks
72. It is clear from case-law that marks may be regarded as forming part of the same series or family, inter alia, where they reproduce in full a single distinctive element with the addition of a graphic or word element differentiating them one from the other or where they are characterised by the repetition of a single prefix or suffix taken from an original mark ( BAINBRIDGE, cited in paragraph 17 above, paragraph 123).
73. In this connection it is appropriate to recall that, in the present case, the earlier marks are a combination of the prefix ‘uni’, which has a certain distinctive character, as will be shown below, with another verbal element, either ‘rak’, ‘fonds’ or ‘zins’, which refers to an objective or policy of the fund designated by the trade mark. The terms joined to the prefix ‘uni’ in the earlier marks are thus descriptive of the services covered or of limited distinctive character in relation to those services (see paragraph 53 above).
74. Those three earlier marks, UNIRAK, UNIFONDS and UNIZINS, on which the intervener based its oppositions, are few in number, but they are nevertheless sufficient in this case to constitute a series or family of marks for the purposes of assessing the existence of a likelihood of confusion arising from the association of the marks applied for with that series. It is therefore necessary to examine the likelihood of association, on the part of the relevant public, of the marks applied for with the family comprised of the three earlier marks, without it being necessary to consider the intervener’s argument that that examination must be carried out in relation to the entire series of marks of which it is the proprietor, rather than solely in relation to the three marks relied on, by way of example, in support of its oppositions.
75. It must be recalled in this connection that, to be capable of creating an association in the minds of consumers with a series of earlier marks, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. That might not be the case where, for example, the element common to the earlier serial marks is used in the trade mark applied for either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content ( BAINBRIDGE, cited in paragraph 17 above, paragraph 127) or where the common element is not distinctive ( CHUFAFIT, cited in paragraph 45 above, paragraph 59, and la Caixa, cited in paragraph 45 above, paragraph 81).
76. Whilst recognising that the marks at issue had the same structure (see paragraph 51 above), the Board of Appeal considered that that was not sufficient for it to find that the marks applied for possessed characteristics enabling them to be associated with the series of earlier marks. According to the Board of Appeal, that association would only be possible if the common element ‘uni’ was not exclusively descriptive or was not lacking in distinctive character. It concluded that the prefix ‘uni’ was distinctive in relation to the financial services in question, given its inherent qualities and the use that was made of it.
77. The applicant claims that there are in this case no factors to establish an ‘association’ between the mark applied for and the series of earlier marks. It argues that, contrary to the Board of Appeal’s finding, the common element ‘uni’ is devoid of any inherent distinctive character in the financial sector. In support of that argument the applicant refers to a number of decisions in which OHIM held the prefix ‘uni’ to be insufficiently distinctive, and also points out that ‘uni’ is a common abbreviation for ‘union’, ‘universal’, ‘unit’ and ‘unique’, all of which are commonly used in everyday language, especially in the financial sector. That is confirmed by the fact that numerous companies registered in Germany and operating in the financial sector have names beginning with ‘uni’ and by the fact that that element, ‘uni’, is included in the names of funds managed by other companies in Germany and in trade marks registered in Germany by other parties in connection with services in Class 36. As a result, this common prefix ‘uni’ is, in and of itself, insufficient to enable the relevant public to associate the services designated by the earlier marks with the activities of the intervener.
78. In its observations following the referral back to the General Court the applicant also challenges the argument put forward by OHIM and the intervener that decisions of the German courts and of the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) must be taken into consideration when assessing the distinctive character of the prefix ‘uni’, and points out that the legal systems of the European Union and of the Member States are independent and that, consequently, the decisions of national authorities are not binding upon EU authorities.
79. OHIM and the intervener dispute the applicant’s arguments.
80. It must be observed in this connection, first of all, that the common structure of the marks at issue is capable of associating the marks applied for with the series of earlier marks (see, to that effect, IG Communications
v OHIM — Citigroup and Citibank (C ITIGATE), cited in paragraph 54 above, paragraph 89). Indeed, on seeing the marks applied for, which, like the earlier marks, are composed of the prefix ‘uni’ followed, without a space, by terms that are descriptive of the financial services covered or of no distinctive character in relation to those services, as was pointed out in paragraph 53 above, the consumer is likely to believe that he is seeing a new trade mark in the family of marks belonging to the intervener, one which designates a different fund that pursues an investment policy identified by the terms attached to the prefix ‘uni’.
81. The fact that the common element ‘uni’ appears at the beginning of all of the marks at issue is a further characteristic likely to give rise to the association of the marks applied for with the family of earlier marks ( BAINBRIDGE, cited in paragraph 17 above, paragraph 127).
82. Nevertheless, according to the case-law referred to in paragraph 45 above, the presence of a series or family of trade marks is relevant to the assessment of the existence of a likelihood of confusion, arising from a risk that the mark applied for will be associated with the series, only if the common element of the marks at issue is distinctive.
83. The parties are, in substance, in disagreement as to whether the common element of the marks at issue, that is to say, the prefix ‘uni’, has distinctive character in relation to the services covered.
84. In so far as concerns the inherent distinctive qualities of the element ‘uni’, the Board of Appeal concluded, in paragraphs 37 and 41 respectively of the contested decisions, that that element was distinctive in relation to the services covered since, for the relevant German public, it referred to the term signifying ‘of a single colour’ or, in colloquial language, the term signifying ‘university’, and therefore had no clear, immediate meaning in relation to financial services. That assessment must be upheld.
85. However, as the applicant claims, it cannot be ruled out that the element ‘uni’, which has its origins in the Latin word ‘unus’, meaning ‘one’, ‘single’ or ‘characterised by a single element’, might also evoke in the minds of the relevant public terms such as ‘unique’, meaning ‘of a singular nature’, ‘unit’, meaning ‘of indivisible or uniform nature’, ‘union’, suggesting cohesion or unity, or ‘universal’, in the sense of ‘complete’ or ‘omniscient’. That is all the more true since, as the intervener has observed, the term ‘uni’ is not used in isolation in the earlier marks — which might indeed have suggested for the German public a reference to ‘university’ or ‘of a single colour’ — but, in every case, together with other words.
86. Nevertheless, it must be held that, in particular, because of the multiplicity of meanings which the applicant itself ascribes to the prefix ‘uni’, that prefix is incapable of suggesting any specific notion regarding the services covered. Moreover, terms such as ‘unique’, ‘unit’, ‘union’ and ‘universal’ are general terms of which no specific meaning in relation to those services has been established. Thus, even were it to be admitted that the prefix ‘uni’ is capable of suggesting terms such as ‘unique’, ‘unit’, ‘union’ or ‘universal’ when combined with terms relating to financial services, it does not designate either objectively or specifically the kind, quality, quantity, intended purpose, value, or other characteristics of those services (see, to that effect and by analogy, Case T‑87/00 Bank für Arbeit und Wirtschaft
v OHIM (EASYBANK)
[2001] ECR II‑1259, paragraphs 28 to 32).
87. In conclusion, it must be held that, having no clear, immediate meaning, the prefix ‘uni’ is not descriptive of the services covered and has a certain, inherent distinctive character in relation to those services. Its distinctive character is all the more evident in the present case since it is followed, in the marks at issue, by terms that are descriptive of the services covered or of limited distinctive character in relation to those services (see, to that effect and by analogy, IG Communications
v OHIM — Citigroup and Citibank (CITIGATE), cited in paragraph 54 above, paragraph 75).
88. Moreover, the Board of Appeal concluded that the prefix ‘uni’ had distinctive character, given the use that was made of it and, more specifically, the fact that the intervener used the three marks containing the prefix ‘uni’ for services of ‘fund investments’ in Germany.
89. It is appropriate to observe in this connection that, as the Board of Appeal decided, the intervener has furnished proof of the use of the three marks containing the prefix ‘uni’ for services of ‘fund investments’ in the German market (see paragraph 70 above).
90. It must also be observed that it is clear from the documents that the Deutsches Patent- und Markenamt and German courts have acknowledged the distinctive character of the term ‘uni’ in relation to financial services.
91. In that context, the Court must dismiss as unfounded the applicant’s argument that the decisions to which the intervener referred during the procedure before OHIM cannot be taken into consideration when determining the likelihood of confusion with the marks for which registration as Community marks has been sought. Indeed, whilst, as the applicant argues, the Community trade mark system is an autonomous system with its own set of objectives and rules peculiar to it and applies independently of any national system (see judgment of 22 November 2011 in Case T‑290/10 Sports Warehouse
v OHIM (TENNIS WAREHOUSE), not published in the ECR, paragraph 35 and the case-law cited), it is also clear from the case-law that, in the interpretation of EU law, neither the parties nor the Court itself can be prevented from drawing on elements taken from national case-law (see, to that effect, Case T‑277/04 Vitakraft-Werke Wührmann
v OHIM — Johnson’s Veterinary Products (VITACOAT)
[2006] ECR II‑2211, paragraph 71). Consequently, even though the decisions of national authorities are not binding in the context of the application of the law relating to the Community trade mark, they may be taken into consideration (judgment of 25 October 2012 in Case T‑552/10 riha
v OHIM — Lidl Stiftung (VITAL & FIT), not published in the ECR, paragraph 66), in particular, as in the present case, in order to assess the relevant public’s perception of the marks at issue.
92. Consequently, the Court must endorse the contested decisions inasmuch as the Board of Appeal acknowledged that the prefix ‘uni’, common to the marks at issue, had distinctive character, both inherently and because of the use that was made of it, for the relevant Germany public in relation to the services covered.
93. The other arguments advanced by the applicant do not invalidate that conclusion.
94. First of all, the Board of Appeal was right to conclude, in paragraphs 38 and 42 respectively of the contested decisions, that the applicant cannot rely on the existence of funds owned by third parties and designated by names containing ‘uni’, such as ‘United Kingdom C’, ‘United Kingdom D’, ‘Unico Equity’, ‘Unico Investment’, ‘Universal-Effect’ and ‘Universal-Value Test’, in order to prove the limited distinctive character of the prefix ‘uni’. Indeed, as the Board of Appeal observed, in substance, the three letters ‘u’, ‘n’ and ‘i’ appearing at the beginning of the English words ‘united’ and ‘universal’ and at the beginning of the term ‘unico’, which appears to have no particular meaning for the German public, cannot be detached from the remainder of the words in question, which are homogenous terms.
95. Secondly, as the Board of Appeal rightly held, any reference to other registrations in Germany of marks belonging to third parties and containing the prefix ‘uni’ equally cannot be used as evidence of the limited distinctive character of the term ‘uni’ inasmuch as those marks have coexisted peacefully with the earlier marks of the intervener, since the applicant has not adduced evidence establishing that those marks have actually been used in the German market. It is clear from settled case-law that, even if the possibility cannot be dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal have found to exist between the two marks, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds of refusal the applicant for the Community trade mark has duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (Case T‑31/03 Grupo Sada
v OHIM — Sadia (GRUPO SADA)
[2005] ECR II‑1667, paragraph 86; Case T–29/04 Castellblanch
v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH)
[2005] ECR II‑5309, paragraph 72; and judgment of 18 September 2012 in Case T‑460/11 Scandic Distilleries
v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), not published in the ECR, paragraph 60). In the present case, the applicant has merely put forward the fact of the registration in Germany of marks belonging to third parties and containing the prefix ‘uni’, without demonstrating that such coexistence was based upon the absence of any likelihood of confusion. Consequently, it has failed to furnish proof that the distinctive character of the element ‘uni’ has been weakened or diminished.
96. Thirdly, as regards the applicant’s reference to the names of certain companies registered in Germany and containing the element ‘uni’, it must first of all be observed that the evidence which the applicant has adduced in support of that allegation has been held to be inadmissible since it was produced for the first time before the Court (see paragraph 37 above). Moreover, it must be noted that company names may be chosen freely, without that choice being subject to any constraints relating to distinctive character within the meaning of trade mark law. This argument of the applicant is, therefore, in any event ineffective.
97. Fourthly, the applicant’s reference to earlier decisions in which OHIM held the term ‘uni’ to be devoid of distinctive character is equally incapable of supporting its argument. It must be observed in this connection that, whilst OHIM must, when examining an application for registration of a Community trade mark, take into account decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, it must reconcile the principles of equal treatment and sound administration with respect for legality (see, to that effect, Case C–51/10 P Agencja Wydawnicza Technopol v OHIM
[2011] ECR I-1541, paragraphs 74 and 75). Nevertheless, it must be observed that the adjudication bodies of OHIM have not adopted any unequivocal practice in their assessment of the distinctive character of the element ‘uni’, as the applicant admitted at the hearing on 17 January 2014. Indeed, in answer to the applicant’s argument, OHIM cited and produced in the annexes to its responses a number of decisions subsequent to those mentioned by the applicant in which it acknowledged the existence of a likelihood of association between the intervener’s marks containing the prefix ‘uni’ and the marks sought by the applicant containing that same prefix ‘uni’ in light of the evidence produced by the intervener of the existence of a family of marks belonging to it. Furthermore, it was precisely as a result of its taking into consideration decisions which it had recently taken in circumstances similar to those of the present case that the Board of Appeal was able to conclude that the prefix ‘uni’ had distinctive character. There are, therefore, no grounds for the applicant’s implicit complaint of breach of the principle of equal treatment.
98. Consequently, it is highly likely that, on seeing the marks applied for UNIWEB and UniCredit Wealth Management, the relevant public will think that it is seeing a new mark in the family of marks belonging to the intervener and comprising the marks UNIFONDS, UNIRAK and UNIZINS.
99. That conclusion cannot be rebutted by the applicant’s argument, supported by specialist press cuttings, that the relevant public sees the marks in question in circumstances where the marks are preceded by the names of the companies managing the funds in question, which excludes any likelihood of confusion as to the provenance of the services covered by the marks at issue.
100. It must be observed in this connection, first of all, that, as the intervener points out, the relevant public might encounter marks designating various investment funds in a variety of circumstances connected with the management of the funds, such as oral presentations or discussions within specialised circles, where the marks are not necessarily preceded or accompanied by the name of the management company in such a way as to preclude any likelihood of confusion as to their provenance.
101. Notwithstanding the fact that, in certain particular circumstances, such as the publication of items in the specialist press concerning investment funds, the marks designating those funds will always be preceded by the name of the management company, the possibility cannot be ruled out that the relevant public might think that funds whose names, like the marks applied for, are composed of the prefix ‘uni’ and terms which are descriptive of the financial services or non-distinctive in relation to those services come from undertakings that are economically linked to the intervener.
102. It follows from the foregoing that the single plea raised by the applicant must be rejected as unfounded.
The plea put forward by the intervener, alleging infringement of Article 8(1)(b) of Regulation No 40/94
103. The intervener claims that the Court should partially annul the contested decisions in so far as the Board of Appeal rejected its oppositions in respect of the ‘real estate affairs’ services covered by the marks applied for, considering them not to be similar to the ‘fund investments’ services covered by the earlier marks, and alter the contested decisions by upholding its oppositions also in respect of ‘real estate affairs’.
104. In putting forward that claim the intervener is making use of the opportunity afforded to it by Article 134(3) of the Rules of Procedure to seek, in its response, a form of order annulling or altering the contested decision on a point not raised in the application (see, to that effect, Case T‑214/04 Royal County of Berkshire Polo Club
v OHIM — Polo/Lauren (ROYAL COUNTY OF BERKSHIRE POLO CLUB)
[2006] ECR II‑239, paragraph 50, and Case T‑116/06 Oakley
v OHIM — Venticinque (O STORE)
[2008] ECR II‑2455, paragraph 81). The applicant expressed its position on that claim in the observations which it submitted in the procedure following the referral of the case back to the General Court. The parties also expressed their respective positions on the claim in their replies to the written questions put by the Court and at the hearing on 17 January 2014. Both the applicant and OHIM have asked the Court to reject the intervener’s claim as unfounded.
105. According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods or services concerned (see Case T‑443/05 El Corte Inglés
v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños)
[2007] ECR II‑2579, paragraph 37 and the case-law cited).
106. Confirming the decisions of the Opposition Division on this point, the Board of Appeal concluded, in paragraphs 28 and 32 respectively of the contested decisions, that the ‘real estate affairs’ services covered by the marks applied for and the ‘fund investments’ services covered by the earlier marks were not similar in that the purpose of the former was to provide assistance upon the purchase, sale or letting of immovable property, in particular, with the aim of producing a profit, whereas the latter consisted in the grouping of capital in order to make more rewarding investments than might be achieved individually. According to the Board of Appeal, the difference between the services covered also resided in the fact that ‘real estate affairs’ are activities which are generally carried out by real estate agents or developers, whereas ‘fund investments’ are services provided by banks and financial institutions.
107. In support of its claim that the Court should partially annul and alter the contested decisions in so far as they rejected its oppositions in respect of ‘real estate affairs’ services, the intervener argues, in substance, that, contrary to Board of Appeal’s findings, services provided in the financial sector and services provided in the real estate sector may be contiguous since real estate funds do not consist solely in the issue or repurchase of participation certificates but also in the purchase, management and resale of immovable property and the creation of genuine added value through the acquisition of ownership of buildings and their management.
108. OHIM and the applicant dispute the intervener’s arguments.
109. First of all, as regards the nature, intended purpose and method of use of the services covered, it has been held that financial services do not have the same nature, intended purpose and method of use as real estate services (see, to that effect, judgment of 11 July 2013 in Case T‑197/12 Metropolis Inmobiliarias y Restauraciones
v OHIM — MIP Metro (METRO), not published in the ECR, paragraph 42). That case-law is equally applicable to the services covered in the present case, in that ‘fund investments’ services are included within the broader category of financial services.
110. Indeed, as the Board of Appeal rightly pointed out, ‘real estate affairs’ services essentially consist in assistance and brokering provided at the time of the purchase, sale or letting of immovable property. Even if it were to be admitted that, as the intervener argues in substance, ‘real estate affairs’ services go beyond the provisions of assistance with purchasing or letting transactions and also include the management and maintenance of buildings, the nature of such services is always defined by the fact that they relate to immovable property. ‘Fund investments’ services, on the other hand, are financial in nature, and consist in the provision of consultancy or brokerage services in the context of the investment of capital, via a financial instrument, in a fund or in an investment transaction. Irrespective of the type of fund that the consumer ultimately chooses for the investment of his capital, including real estate funds, the service provided relates to a transaction of a financial nature relating to a security. The fact, alluded to by the intervener, that ‘fund investments’ services may entail, as they do in its own case, the letting, administration and maintenance of the immovable property comprised in the fund, which helps ensure a return on investment, does not alter the financial nature of the investment consultancy or of the investment transaction.
111. It follows that ‘real estate affairs’ and ‘fund investments’ are not services of a similar nature.
112. Similarly, in so far as concerns the intended purpose and method of use of the services covered, it must be pointed out that the prime objective of ‘real estate affairs’ services is, for the consumer, the acquisition, sale or letting of immovable property in accordance with his own particular needs and requirements and, in p articular, with a view to making a profit. The objective of ‘fund investments’ services, on the other hand, is to increase the return on capital invested in a financial instrument. Thus, even though the aim of the two services may be the investment of capital, particularly where a client is considering the acquisition of immovable property with a view to making a profit, the purpose of a ‘real estate affairs’ service will always be connected with the transfer of ownership or possession of a building, rather than with a purchaser’s intention to make a capital gain from a building which has been purchased.
113. Moreover, even comparing ‘real estate affairs’ services to ‘real estate funds investments’ services, as the intervener does, it must be observed that the financial intermediary who carries out the investment of capital proposes to his client the fund as a financial instrument for investment, and not the immovable property comprised in the fund, as the applicant rightly points out. The consumer either becomes the owner of immovable property, as the recipient of ‘real estate affairs’ services, or, as the recipient of ‘fund investments’ services, invests in a financial instrument backed by a fund, and in particular by a real estate fund, with the sole aim of deriving a profit from the management of his assets by third parties.
114. Consequently, ‘real estate affairs’ services and ‘fund investments’ services are also different in so far as concerns their aim or the use which consumers propose to make of them. They are therefore not similar in so far as concerns their intended purpose.
115. Secondly, as regards the question whether the services covered are in competition with each other, it is clear from the nature and intended use of the services that the relevant public for ‘real estate affairs’ services is not the same as that for ‘fund investments’ services. Consequently, the services at issue are not directly substitutable or interchangeable and cannot be in competition with each other (Case T‑316/07 Commercy
v OHIM — easyGroup IP Licensing (easyHotel)
[2009] ECR II‑43, paragraph 56).
116. Thirdly, the services covered are not complementary either. Even on the assumption that ‘real estate affairs’ services entail, as a principal or ancillary operation, a financial transaction such as a bank loan or the payment of the purchase price by way of bank transfer, the financial services associated with such transactions are not so indispensable or important to the use of real estate services that consumers would entrust those financial services to the same undertaking as the real estate services ( METRO, cited in paragraph 109 above, paragraph 50).
117. Fourthly, according to the Board of Appeal, the dissimilarity of the services at issue also resides in the fact that they are provided by different service providers: ‘real estate affairs’ are activities which are generally carried out by real estate agents or developers, whereas ‘fund investments’ are services provided by banks and financial institutions.
118. That finding must be upheld. Nevertheless, in the current climate, there is a trend in the sector for services provided by institutions such as banks to extend activities to adjacent markets. It is therefore not impossible, as the applicant acknowledged at the hearing on 17 January 2014, that the same international financial institution or undertakings economically linked to such an institution might offer services of a different kind but in adjacent markets, and in particular in the market for real estate services. Similarly, OHIM acknowledged at the hearing that, in exceptional circumstances, such as during a period of financial crisis, banks may find it necessary to carry out certain activities in the sector for real estate services. However, in order for such considerations to be taken into account when assessing the similarity of the services covered, it would be necessary to establish that the trend in question is widespread in the sector for ‘real estate affairs’ services and that consumers regard it as normal for those services also to be provided by banks and other financial institutions (see, to that effect, Case T‑150/04 Mülhens
v OHIM — Minoronzoni (TOSCA BLU)
[2007] ECR II‑2353, paragraph 37), a point which the applicant has neither proven nor alleged.
119. It follows from the foregoing that ‘real estate affairs’ services and ‘fund investments’ services differ in nature, intended purpose and method of use. Nor are they in direct competition with each other or complementary and they do not, in principle, have the same distribution channels. It must therefore be held that, as the Board of Appeal found, ‘real estate affairs’ services and ‘fund investments’ services are not similar.
120. As a result, the Court must reject as unfounded the single plea put forward by the intervener in support of its claim for partial annulment and alteration of the contested decision.
121. Therefore, both the actions and the claim for partial annulment and alteration submitted by the intervener in accordance with Article 134(3) of the Rules of Procedure must be dismissed in their entirety.
Costs
122. In the judgment on appeal, cited in paragraph 23 above, the Court of Justice reserved the costs. It is therefore for this Court to rule in this judgment on all the costs relating to the various proceedings, in accordance with Article 121 of the Rules of Procedure.
123. Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Under Article 87(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, or where the circumstances are exceptional, the Court may order that the costs be shared or that each party bears its own costs.
124. In the present case, the applicant did not apply for costs in the proceedings before this Court prior to the appeal. In the appeal proceedings and in its observations in the proceedings following the referral back to this Court it asked for the intervener to be ordered to pay the costs. In its responses in the proceedings before this Court prior to the appeal and in the appeal proceedings, OHIM asked for the applicant to be ordered to pay the costs. The intervener, on the other hand, has not applied for costs.
125. That being so, and having regard to the fact that the applicant and the intervener have failed on certain of their heads of claim, it is appropriate to order the applicant to bear its own costs and to pay the costs incurred by OHIM, in accordance with the form of order sought by OHIM, while the intervener must be ordered to bear its own costs.
Operative part
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the actions;
2. Dismisses the applications for annulment and alteration submitted by Union Investment Privatfonds GmbH;
3. Orders UniCredit SpA to pay the costs, with the exception of those incurred by Union Investment Privatfonds;
4. Orders Union Investment Privatfonds to bear its own costs.
Delivered in open court in Luxembourg on 25 November 2014.