CELEX: C2006/326/130
Language: en
Date: 2006-12-30 00:00:00
Title: Case T-303/06: Action brought on 6 November 2006 — UniCredito Italiano v OHIM — Union Investment Privatfonds (Uniweb)

30.12.2006   
            
            
               EN
            
            
               Official Journal of the European Union
            
            
               C 326/60
            
         Action brought on 6 November 2006 — UniCredito Italiano v OHIM — Union Investment Privatfonds (Uniweb)
   (Case T-303/06)
   (2006/C 326/130)
   Language in which the application was lodged: Italian
   Parties
   
      Applicant: UniCredito Italiano S.p.A. (Genoa, Italy) (represented by: G. Floridia and R. Floridia, lawyers)
   
      Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs)
   
      Other party to the proceedings before the Board of Appeal of OHIM: Union Investment Privatfonds GmbH
   Form of order sought
   
               —
            
            
               annul the decision of the Second Board of Appeal of OHIM of 5 September 2006, adopted in joined proceedings R 196/2005-2 and R 211/2005-2, relating to opposition proceedings No B490971 concerning Community trade mark application No 2.236.164.
            
         Pleas in law and main arguments
   
      Applicant for a Community trade mark: The applicant
   
      Community trade mark concerned: Word mark ‘UNIWEB’ (application for registration No 2.236.164), for services in Classes 35, 36 and 42.
   
      Proprietor of the mark or sign cited in the opposition proceedings: Union Investment Privatfonds GmbH, previously Union Investment Gesellschaft GmbH.
   
      Mark or sign cited in opposition: German word marks ‘UNIFONDS’ (No 991.995) and ‘UNIRAK’ (No 991.997) and German figurative mark ‘UNIZINS’ (No 2.016.954), to distinguish capital investments, as referred to in Class 36.
   
      Decision of the Opposition Division: Opposition partially upheld, in so far as a likelihood of confusion is recognised ‘only as regards services found to be similar’.
   
      Decision of the Board of Appeal: Dismissal of the appeal.
   
      Pleas in law: The contested decision wrongly applied the theory of increased protection for so-called marks in a series, developed by the Court of First Instance in its judgment of 23 February 2006 in Case T-194/03 concerning the trade mark ‘Bainbridge’, because the two necessary conditions are not fulfilled: (a) the element common to the series of earlier marks must be distinctive; and (b) the earlier marks must be used and understood by the relevant public as signifying a multiplicity of products and/or services.