Case involving family of ‘uni’ marks referred back to General Court

European Union
In Union Investment Privatfonds GmbH v UniCredito Italiano SpA (Case C-317/10 P, June 16 2011), the Court of Justice of the European Union (ECJ) has set aside the judgment of the General Court in a case involving a family of marks.

Union Investment Privatfonds GmbH, the owner of the German word marks UNIFONDS and UNIRAK, and of the German figurative mark UNIZINS, opposed the registration of the trademarks UNIWEB and UNICREDIT WEALTH MANAGEMENT as Community trademarks by UniCredito Italiano SpA. All trademarks concerned covered financial and banking services, as well as certain related services. 
 
Both the Opposition Division and the Board of Appeal of OHIM upheld the opposition on the grounds that there was a likelihood of confusion between the marks. In particular, both instances took into consideration the fact that Union Investment owned a series of 'uni'-prefixed trademarks for financial and banking services.
 
The General Court took a different stance. According to the court, the mere fact that the marks shared the same prefix was insufficient to conclude that there was a likelihood of confusion. In this respect, the court pointed out that:
  • ‘uni' is a commonly used prefix in the financial industry; and
  • the names of the respective managing companies always appeared on top of the list of the funds (ie, the trademarks at issue) that they managed.
The ECJ agreed with OHIM and disagreed with the General Court. According to the ECJ, in the case of a ‘family’ or ‘series' of trademarks, a likelihood of confusion may result from the fact that the consumer may erroneously consider the later trademarks to be part of this family. In this respect, the ECJ referred to its September 13 2007 decision in BAINBRIDGE (Case C-234/06 P).
 
Moreover, the ECJ held that the General Court had not taken into account all the relevant circumstances of the case. In particular, the General Court:

  • should have taken into account the structure of the trademarks at issue (ie, the fact that they all began with the prefix ‘uni’); and
  • should have considered whether there was a likelihood of indirect confusion (ie, whether consumers were likely to believe that the parties' services originated from the same undertaking or from economically-linked undertakings).
The ECJ thus referred the case back to the General Court for reconsideration.
 
The ECJ accorded significant weight to the fact that the opposition was based on a ‘family’ or 'series' of trademarks - this shows that trademarks belonging to the same family can strengthen each other's scope of protection.
 
Paul Reeskamp, Klos Morel Vos & Schaap, Amsterdam

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