Judgment of the General Court (Third Chamber) of 27 April 2010 – UniCredito Italiano v OHIM – Union Investment Privatfonds (UNIWEB and UniCredit Wealth Management)

(Cases T-303/06 and T-337/06)

Community trade mark – Opposition proceedings – Applications for Community word marks UNIWEB and UniCredit Wealth Management – Earlier national word marks UNIFONDS and UNIRAK and earlier national figurative mark UNIZINS – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009)

Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 48-49)

Re:

ACTION brought against two 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.

Information relating to the case

Applicant for the Community trade mark: UniCredito Italiano SpA Community trade mark sought: Word mark UNIWEB for services in Classes 35, 36 and 42 – Application No 2236164 – and word mark UniCredit Wealth Management for goods and services in Classes 16, 35, 36, 41 and 42 – Application No 2330066 Proprietor of the mark or sign cited in the opposition proceedings: Union Investment Privatfonds GmbH Mark or sign cited in opposition: German word marks UNIFONDS (No 991995) and UNIRAK (No 991997) and German figurative mark UNIZINS (No 2016954), to distinguish capital investments, as referred to in Class 36 Decision of the Opposition Division: Opposition upheld in relation to some of the disputed services and dismissed in relation to others Decision of the Board of Appeal: Appeal dismissed





Operative part

The Court:

1. Orders that Cases T-303/06 and T-337/06 be joined for the purposes of the judgment;

2. Annuls the Decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 5 September 2006 (Joined Cases R 196/2005-2 and R 211/2005-2) in so far as it dismisses the appeal by UniCredito Italiano SpA in Case R 211/2005-2 by upholding the oppositions to the registration of the trade mark applied for, UNIWEB, with regard to ‘Banking business; financial affairs; monetary affairs; insurance; financial and insurance consultancy and information; credit/debit card services; banking and financial services via the Internet’ in Class 36;

3. Annuls the Decision of the Second Board of Appeal of OHIM of 25 September 2006 (Joined Cases R 456/2005-2 and R 502/2005‑2) in so far as it dismisses the appeal by UniCredito Italiano SpA in Case R 456/2005-2 by upholding the oppositions to the registration of the trade mark applied for, UniCredit Wealth Management, with regard to ‘Banking business; financial affairs; monetary affairs; assurance; financial information’ in Class 36;

4. Dismisses the applications of Union Investment Privatfonds GmbH;