Appeal brought on 2 July 2010 by Union Investment Privatfonds GmbH against the judgment of the General Court (Third Chamber) delivered on 27 April 2010 in Joined Cases T-303/06 and T-337/06 UniCredito Italiano SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) — Union Investment Privatfonds GmbH

(Case C-317/10 P)

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2010/C 246/43

Language of the case: Italian

Parties

Appellant: Union Investment Privatfonds GmbH (represented by: J. Zindel, Rechtsanwalt)

Other parties to the proceedings: UniCredito Italiano SpA and Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

Form of order sought

Pleas in law and main arguments

The appellant submits that the final half-sentence of Article 8(1)(b) of Regulation (EC) No 40/94 (1) has been incorrectly applied. In addition, it submits that the contested decision was taken on the basis of some of the facts only, which failed in part to reflect the actual position.

Unlike OHIM which had correctly upheld the substance of the appellant’s claims, the General Court erred in failing to recognise that the marks at issue belong to a large family of marks. It is submitted that all the marks comprising that family each contain the same initial syllable, followed directly by another investment-sector concept. The marks of UniCredito Italiano SpA also displayed the same distinctive elements of that series. The General Court erred in starting from the premiss that the marks under comparison were structurally different on the basis that the initial syllable of UniCredito Italiano SpA’s marks is followed by an element in English, whereas the initial syllable of the appellant’s marks is followed by one in German. Nevertheless, the General Court failed to have due regard to the fact that because the marks form part of a series, all the marks in a family of marks must be taken into consideration when applying the final half-sentence of Article 8(1)(b) of Regulation (EC) No 40/94. In that regard, it must be emphasised that the appellant also uses English-language and international elements, so that the General Court’s opposing point of view is objectively mistaken.

The appellant further submits that the General Court also erred in assuming that the marks used by it in respect of investment funds are always used in conjunction with the name of the issuing institution. That is, however, refuted by the evidence already submitted to OHIM by the appellant, from which it is clear, as has been outlined, that in press articles on funds, or during the provision of investment advice, the name of the issuing institution is not referred to.

The appellant emphasises that the judgment under appeal is inadequately reasoned since it is not apparent how the General Court managed to determine the German public’s point of view, which is of crucial importance in analysing the likelihood of confusion.

However, determining that point of view was necessary, given that by submitting various decisions of the Deutsches Patent- und Markenamt (DPMA) (German Patent and Trade Mark Office) and other German courts, the appellant proved that the DPMA and the German courts assume that there is confusion on the part of the German public where certain marks containing the same initial syllable as that in the appellant’s series of marks are registered or used by third parties in order to designate services in the financial sector.

Lastly, it is submitted that, like OHIM beforehand, the General Court failed to realise that there is a likelihood of confusion due to the similarity of services also in the ‘real-estate affairs’ sector. In the case of the real-estate funds covered by the appellant’s marks, the appellant states that the increase in value expected by the investor is achieved by means of the management, leasing or sale of real estate. The appellant therefore submits that both OHIM and the General Court erred in assuming that managing a real-estate fund is limited to raising capital. In so far as OHIM attributed only property-brokerage activities to ‘real-estate affairs’, this fails to take due account of the fact that the concept of ‘real-estate affairs’ is much broader.

(1)  Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1)