Action brought on 28 November 2006 - UniCredito Italiano v OHIM -Union Investment Privatfonds (UniCredit Wealth Management)

(Case T -337/06)

Language in which the application was lodged: Italian

Parties

Applicant: UniCredito Italiano SpA (Genoa, Italy) (represented by: G. Floridia and R. Floridia, lawyers)

Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

Other party to the proceedings before the Board of Appeal of OHIM: Union Investment Privatfonds GmbH

Form of order sought

annulment of the contested decision

Pleas in law and main arguments

Applicant for a Community trade mark: UniCredito Italiano

Community trade mark concerned: Word mark 'UniCredit Wealth Management' (registration application No 2.330.066) for goods and services in Classes 16, 35, 36, 41 and 42

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 991.995) and 'UNIRAK' (No 991.997) and figurative mark 'UNIZINS' (No 2.016.954) for services in Class 36 (capital investment)

Decision of the Opposition Division: Opposition allowed in part in so far as there was held to be a likelihood of confusion as regards capital investments

Decision of the Board of Appeal: to dismiss the action

Pleas in law: Misapplication of the theory of the extended protection of what are known as serial marks as formulated by the Court of First Instance in Case T-194/03 Il Ponte Finanziaria v OHIM [2006] ECR II-0000 (Bainbridge)

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