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Corte di giustizia UEsentenza

Corte di giustizia UE n. 207/2018

ECLI:EU:T:2018:134
Testo integrale del provvedimento

Testo integrale del provvedimento

[OSCURATO:PERSONA] ([OSCURATO:PERSONA])

13 March 2018 ( * ) (EU trade mark — [OSCURATO:PERSONA] proceedings — Application for EU figurative mark Guidego what to do next — Earlier EU word mark [OSCURATO:PERSONA] — Relative ground for refusal — Likelihood of confusion — [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] (EC) No 207/2009 (now [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] (EU) 2017/1001))

[OSCURATO:PERSONA] T‑346/17,

[OSCURATO:PERSONA], SL,

established in Palma de Mallorca ([OSCURATO:PERSONA]), represented by L. [OSCURATO:PERSONA], lawyer, applicant, v

[OSCURATO:PERSONA] (EUIPO),

represented by J. Ivanauskas, acting as Agent, defendant, the other party to the proceedings before the [OSCURATO:PERSONA] of Appeal of EUIPO, intervener before the [OSCURATO:PERSONA], being

[OSCURATO:PERSONA],

established in Paris (France), represented by S. Lipovetsky, lawyer, ACTION brought against the decision of the [OSCURATO:PERSONA] of Appeal of EUIPO of 21 March 2017 ([OSCURATO:PERSONA] R 449/2016-4), relating to opposition proceedings between [OSCURATO:PERSONA] and [OSCURATO:PERSONA],

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]),

composed of D. [OSCURATO:PERSONA], [OSCURATO:PERSONA],

I. [OSCURATO:PERSONA] (Rapporteur) and

I. [OSCURATO:PERSONA], [OSCURATO:PERSONA], [OSCURATO:PERSONA]: E. Coulon, having regard to the application lodged at the [OSCURATO:PERSONA] on 31 May 2017, having regard to the response of EUIPO lodged at the [OSCURATO:PERSONA] on 4 August 2017, having regard to the response of the intervener lodged at the [OSCURATO:PERSONA] on 7 August 2017, having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to [OSCURATO:PERSONA] 106(3) of the Rules of Procedure of the [OSCURATO:PERSONA], gives the following [OSCURATO:PERSONA] to the dispute 1 On 6 June 2014, the applicant, [OSCURATO:PERSONA] SL, filed an application for registration of an EU trade mark with the [OSCURATO:PERSONA] (EUIPO) pursuant to [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), as amended (replaced by [OSCURATO:PERSONA] (EU) 2017/1001 of the [OSCURATO:PERSONA] and of the Council of 14 June 2017 on the [OSCURATO:PERSONA] trade mark (OJ 2017 L 154, p. 1)). 2 Registration as a mark was sought for the following figurative sign: 3 The services in respect of which registration was applied for are in Classes 39, 41 and 43 of the [OSCURATO:PERSONA] concerning the [OSCURATO:PERSONA] of Goods and Services for the Purposes of the Registration of [OSCURATO:PERSONA] of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description: – Class 39: ‘Travel arranging and organising tourist excursions via the internet; agency services for organising excursions and arranging travel via the internet; booking of tickets for travel and excursions via the internet; issuing of tickets for travel and excursions; sightseeing, tour guide and excursion services; booking of package holidays via the internet; consultancy relating to tourist travel; holiday information; provision of travel information, arranging of transport and travel; online information, reservation and booking in the field of tourist travel; rental of vehicles via the internet’. – Class 41: ‘Entertainment; cultural activities; planning (party -) [entertainment]; shows for recreational or entertainment purposes; tourist entertainment; cultural programmes of tourist trips, holidays, entertainment; organisation of tickets for cultural and entertainment events and shows; provision of information relating to entertainment online from a computer database of the internet; entertainment services provided online from a computer database or the internet’. – Class 43: ‘Temporary accommodation reservations; making reservations and bookings for restaurants and meals; providing of information relating to temporary accommodation and restaurants online, from a computer database on the internet; rental of temporary accommodation; holiday camp services (accommodation); tourist homes; catering services for the provision of food; services relating to reservation of hotel rooms via travel agencies or intermediaries; providing of information via the internet or via a computer network relating to the booking of temporary accommodation, holiday accommodation and restaurants.’ 4 The EU trade mark application was published in [OSCURATO:PERSONA] 144/2014 of 5 August 2014. 5 On 5 November 2014, the intervener, [OSCURATO:PERSONA], filed a notice of opposition, pursuant to [OSCURATO:PERSONA] 41(1) of [OSCURATO:PERSONA] 207/2009 (now [OSCURATO:PERSONA] 46(1) of [OSCURATO:PERSONA] 2017/1001), to registration of the trade mark applied for, in respect of the services referred to in paragraph 3 above. 6 The opposition was based on the EU word mark [OSCURATO:PERSONA], registered on 15 September 2011 under No 9936584 and designating goods and services in Classes 9, 35, 38, 39, 41, 42 and 45 corresponding, for Classes 39 and 41, to the following description: – Class 39: ‘Information relating to tourist and cultural tours, via the internet, mobile telephones and digital tablet devices; arrangement of excursions, sightseeing (tourism) and cultural; organisation of geolocated guided tours’. – Class 41: ‘Providing of training; providing of training; entertainment; sporting and cultural activities; education or entertainment information; leisure facilities; publication of books and tourist guides and cultural; production of tourist and cultural films; rental of sound recordings; video tape editing; photography services; arranging of competitions (education or entertainment); arranging and conducting of colloquiums, lectures or congresses; organisation and holding of exhibitions for cultural or educational purposes; reservation of tickets for shows; games offered online on a computer network; electronic online publication of periodicals and books; micro publishing; organisation of outdoor activities’. 7 The grounds relied on in support of the opposition were those referred to in [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 (now [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 2017/1001). 8 On 7 January 2016, the [OSCURATO:PERSONA] upheld the opposition in its entirety, on the ground that there was a likelihood of confusion within the meaning of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009. 9 On 7 March 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of [OSCURATO:PERSONA] 207/2009 (now Articles 66 to 71 of [OSCURATO:PERSONA] 2017/1001), against the decision of the [OSCURATO:PERSONA]. 10 By decision of 21 March 2017 (‘the contested decision’), the [OSCURATO:PERSONA] of Appeal of EUIPO dismissed the appeal and confirmed that there was a likelihood of confusion.

In particular, as regards the comparison of the services, it approved the findings of the [OSCURATO:PERSONA] that they were identical or similar. 11 As regards the comparison of the signs, the [OSCURATO:PERSONA] of Appeal found, first, that the word element ‘guidego’, which will be read as one word, notwithstanding the fact that in English ‘guide’ and ‘go’ exist as separate words, was the most distinctive in the trade mark applied for; secondly, that the signs at issue were visually similar to an average degree; thirdly, that, for at least the French-, Finnish- and Spanish-speaking part of the relevant public, the signs were phonetically highly similar; and, fourthly, that the conceptual comparison remained neutral.

Finally, it also rejected the applicant’s argument that the conceptual differences between the signs counteract the visual and phonetic similarities between them, even for an English-speaking public.

Forms of order sought 12 The applicant claims that the [OSCURATO:PERSONA] should: – annul the contested decision; – consequently, allow the application for registration of the mark applied for. 13 EUIPO contends that the [OSCURATO:PERSONA] should: – dismiss the application; – order the applicant to pay the costs. 14 The intervener contends that the [OSCURATO:PERSONA] should: – dismiss the action and, consequently, reject the application for registration of the mark applied for in its entirety; – order the applicant to pay the costs.

Law 15 The applicant raises a single plea in law, alleging breach of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009.

It submits, in essence, that there is no likelihood of confusion in the present case. 16 The applicant criticises the [OSCURATO:PERSONA] of Appeal for having based itself on the incorrect premiss that the word element ‘guidego’ of the mark applied for is ‘fanciful’ and ignored, in that regard, that it is composed of two common English words.

It claims that that error vitiated the reasoning of the [OSCURATO:PERSONA] of Appeal regarding the visual, phonetic and conceptual comparison of the signs.

In particular, the applicant argues that the fact that the word element of the mark applied for is represented in two different colours makes it possible to observe the two words of which it consists, so that the overall impression conveyed by each sign is different. 17 EUIPO and the intervener challenge the applicant’s assertions. 18 In accordance with [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

The likelihood of confusion includes the likelihood of association with the earlier trade mark. 19 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion.

According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v

[OSCURATO:PERSONA] — [OSCURATO:PERSONA] ([OSCURATO:PERSONA])

, T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited). 20 For the purposes of applying [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar.

Those conditions are cumulative (see judgment of 22 January 2009, Commercy v [OSCURATO:PERSONA] — easyGroup IP Licensing (easyHotel) , T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited). 21 When the protection of the earlier trade mark extends to the entirety of the [OSCURATO:PERSONA], it is necessary to take into account the perception of the marks at issue by the consumer of the services in question in that territory.

However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 exists in part of the [OSCURATO:PERSONA] (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v [OSCURATO:PERSONA] — [OSCURATO:PERSONA] (VENADO with frame and others) , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited). 22 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect.

It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v

[OSCURATO:PERSONA] — [OSCURATO:PERSONA] (RESPICUR)

, T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited). 23 In the present case, the [OSCURATO:PERSONA] of Appeal found, in paragraph 12 of the contested decision, that the relevant public for the services in question was the general public in the [OSCURATO:PERSONA] displaying an average level of attention.

That definition, which is not disputed by the parties, is correct and must be upheld. 24 As regards the comparison of the services at issue, the [OSCURATO:PERSONA] of Appeal endorsed, in paragraph 13 of the contested decision, the [OSCURATO:PERSONA] finding that the services in question in Classes 39, 41 and 43 were in part identical and in part similar.

That finding, which is moreover not disputed by the parties, is correct and must be upheld.

The comparison of the signs 25 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components.

The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion.

In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007,

[OSCURATO:PERSONA]

v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited). 26 The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark.

On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007,

[OSCURATO:PERSONA]

v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).

It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, [OSCURATO:PERSONA] v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007, Nestlé v

[OSCURATO:PERSONA]

, C‑193/06 P, not published, EU:C:2007:539, paragraph 42).

That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v

[OSCURATO:PERSONA]

, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

On the dominant and distinctive element of the sign applied for and its perception by the relevant public 27 As regards the mark applied for, the [OSCURATO:PERSONA] of Appeal stated, in paragraph 17 of the contested decision, that it consists of the word element ‘guidego’, written in green and dark blue, of the word sequence ‘what to do next’, written below in dark blue and in smaller typeface, and of a figurative element placed to the left of the element ‘guidego’ consisting of a dark blue circle in which a green figurative element in the shape of a water drop is placed horizontally.

It concluded, in paragraph 18 of the contested decision, that the element ‘guidego’ was the more distinctive. 28 It must be held, as noted by the [OSCURATO:PERSONA] of Appeal, that the element ‘guidego’, because of its size and its position in the sign applied for, must be regarded as being the dominant element of that sign.

On the other hand, contrary to what the intervener maintains, the other elements which make up the sign applied for are not negligible, as a result of which they must not be disregarded in evaluating the signs in question. 29 As regards the perception of the element ‘guidego’, the [OSCURATO:PERSONA] of Appeal held, in paragraph 17 of the contested decision, that, although it was written in two different colours, and despite the fact that the words ‘guide’ and ‘go’ exist in English, it will still be read in one word, in particular because the colours are not significantly different. 30 The applicant disputes that assessment and submits that the word element ‘guidego’ is a juxtaposition of the English words ‘guide’ and ‘go’ and that the use of different colours allows the relevant public to distinguish between those two words, even if they are combined. 31 EUIPO contends that the element ‘guidego’ will be understood as a fanciful term and as being a single word because, despite the use of colours, there is nothing to indicate that that element could be divided into ‘guide’ and ‘go’. 32 As the applicant submits, it must be pointed out that the dominant element of the sign requested is the result of a juxtaposition of two words and that the use of different colours makes it possible to perceive them.

In that regard, it is irrelevant that the colours used are common, as EUIPO submits, since the contrast between them makes it possible to distinguish between the words making up the word element ‘guidego’.

Moreover, when examining the sign applied for, it should be noted that, between the two components of the dominant element, there is a space which will underline the perception that that element is composed of two words.

It follows that the [OSCURATO:PERSONA] of Appeal erred in finding that the element ‘guidego’ of the sign applied for would be read as a single word. 33 However, that conclusion is without prejudice to the conceptual comparison of the signs, since the fact that consumers distinguish between the two words which make up the element ‘guidego’ does not mean that they will necessarily be able to understand them.

Visual comparison 34 As regards the visual comparison, it must be pointed out, first, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v

[OSCURATO:PERSONA] — [OSCURATO:PERSONA] TV ([OSCURATO:PERSONA])

, T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited). 35 In the present case, the [OSCURATO:PERSONA] of Appeal found, in paragraph 20 of the contested decision, that the signs at issue were similar to an average degree.

In particular, it held that the dominant element of the sign applied for and the sign comprising the earlier mark consisted of seven letters of which six coincided, and that the only difference concerned their central vowel.

As to the visual elements, the [OSCURATO:PERSONA] of Appeal held that the colour and font used were neither significant nor highly stylised and that the figurative element had a fairly simple geometric layout. 36 The applicant disputes that assessment, claiming that the signs at issue differ in their structure and that the mere fact that they share a number of characteristics would be insufficient for them to be considered visually similar. 37 In the present case, it should be noted, as observed by the [OSCURATO:PERSONA] of Appeal, that the sign comprising the earlier mark and the dominant element of the mark applied for are similar to the extent that they coincide in six out of seven letters and differ only in the central vowel.

Similarly, the degree of stylisation of the word element and the additional elements of the mark applied for do not counteract the similarities between the signs, as a result of which they are similar to an average degree. 38 That degree of similarity exists regardless of whether the element ‘guidego’ is perceived as two separate words or as a single element, so that the error committed by the [OSCURATO:PERSONA] of Appeal in paragraph 17 of the contested decision is irrelevant as regards the visual comparison of the signs.

Phonetic comparison 39 As regards the phonetic comparison of the signs, the [OSCURATO:PERSONA] of Appeal found, in essence, in paragraph 21 of the contested decision, that only the elements ‘guidigo’ and ‘guidego’ are pronounced, since the combination of words ‘what to do next’ was written in characters too small to be spoken.

According to the [OSCURATO:PERSONA] of Appeal, the elements ‘guidigo’ and ‘guidego’ are not existing words and are pronounced almost identically by the French-, Finnish- and Spanish-speaking part of the relevant public, with the result that the signs at issue have a high degree of phonetic similarity for at least that part of the relevant public. 40 The applicant claims that the mark applied for will be pronounced in six syllables, whereas the earlier mark will be pronounced in four or five, depending on the situation, and that the rhythm and intonation of the signs at issue differs significantly since the requested sign will be pronounced as in English, while the sign constituting the mark will be pronounced as an invented word. 41 In the present case, the [OSCURATO:PERSONA] of Appeal’s finding that there is a high degree of phonetic similarity in so far as the pronunciation of the elements ‘guidigo’ and ‘guidego’ is very similar must be upheld. 42 First of all, it must be held that, even if the findings of the [OSCURATO:PERSONA] of Appeal that the words ‘what to do next’ in the sign applied for were written in characters that are too small to be spoken are not correct, the fact remains that, to the extent that those words are written in much smaller typeface, they will probably not be spoken.

In that regard, it is also necessary to take into account the natural tendency of consumers to shorten long signs (see judgment of 4 May 2016,

[OSCURATO:PERSONA] & [OSCURATO:PERSONA]

v

EUIPO [OSCURATO:PERSONA] ([OSCURATO:PERSONA] & [OSCURATO:PERSONA])

, T‑193/15, not published, EU:T:2016:266, paragraph 60 and the case-law cited). 43 Next, it should be noted that the sign [OSCURATO:PERSONA] is a fanciful term, whereas the element ‘guidego’ is a juxtaposition of two English words.

However, that fact is not sufficient to make it possible to consider that the difference in pronunciation of the two distinctive elements would be significant. 44 Even if, as the applicant submits, the element ‘guidego’ is pronounced according to the rules of English pronunciation, whereas the [OSCURATO:PERSONA] sign is pronounced according to the rules of pronunciation of the mother tongue of the consumer other than English, that possible difference is relevant only in respect of the part of the relevant public whose mother tongue is not English, but who does speak English.

It follows that the [OSCURATO:PERSONA] of Appeal’s finding is in any event correct, at least as regards the non-English-speaking section of the relevant public. 45 Moreover, it should be noted that, even if the foreign origin of the word is recognised by the public, it may not be pronounced in the same manner as in the original language (see, to that effect, judgment of 1 February 2005,

SPAG

v [OSCURATO:PERSONA] — Dann and Backer (HOOLIGAN) , T‑57/03, EU:T:2005:29, paragraph 58).

Thus, even if all members of the general public of the [OSCURATO:PERSONA] recognise the element ‘guidego’ as the juxtaposition of two English words, it cannot be argued that the whole of that public will pronounce that element according to the rules of English pronunciation. 46 In addition, it should be borne in mind that, as regards the phonetic comparison of the signs, it is necessary to disregard their meaning, as those considerations are relevant to the conceptual comparison (see, to that effect, judgment of 4 June 2013, i-content v [OSCURATO:PERSONA] — Decathlon (BETWIN) , T‑514/11, EU:T:2013:291, paragraph 54 (not published)). 47 Finally, it should be noted that the fact that there is a space between the two words composing the dominant element of the sign applied for does not affect its pronunciation in the present case (see, to that effect, judgment of 21 September 2017,

[OSCURATO:PERSONA]

v EUIPO — [OSCURATO:PERSONA] (Idealogistic) , T‑620/16, not published, EU:T:2017:635, paragraph 65).

Conceptual comparison 48 As regards the conceptual comparison of the signs at issue, the [OSCURATO:PERSONA] of Appeal found, in paragraph 22 of the contested decision, that it remained neutral since neither ‘guidego’ or ‘guidigo’ had any meaning for the relevant public.

Admittedly, at that stage of its reasoning, it noted that the element ‘guidego’ consisted of the English words ‘guide’ and ‘go’, but found that, considered as a whole, that element had no meaning and that it was devoid of any meaning for the non-English-speaking part of the relevant public. 49 The applicant claims that the sign applied for consists of a juxtaposition of the common English words ‘guide’ and ‘go’ followed by the words ‘what to do next’ which are likely to be understood by [OSCURATO:PERSONA] consumers.

The applicant refers, in particular, to the case-law according to which the average consumer in the EU [OSCURATO:PERSONA] may understand a number of basic English words.

In addition, the word ‘guide’ exists in other [OSCURATO:PERSONA] countries in a very similar spelling.

According to the applicant, the two signs differ conceptually. 50 As regards, first, the English-speaking part of the relevant public, it must be held that it will include all the elements composing the sign applied for.

As has already been stated in paragraph 32 of the present judgment, the dominant element of the mark applied for is composed of the two English words ‘guide’, meaning, inter alia, ‘lead, guide, show the way’, and ‘go’, meaning ‘move, travel, pass along’.

The same is true for the combination of words ‘what to do next’. 51 By contrast, as rightly found by the [OSCURATO:PERSONA] of Appeal, the element ‘guidego’, taken as a whole, does not convey a clear concept. 52 With regard to the sign constituting the earlier mark ‘guidigo’, as rightly found by the [OSCURATO:PERSONA] of Appeal, it is a fanciful word which has no meaning for the relevant public. 53 It follows that, for the English-speaking part of the relevant public, the signs are conceptually different. 54 However, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, while perceiving a word sign, he will identify the elements which, for him, suggest a concrete meaning or resemble words known to him (judgments of 6 October 2004 in Vitakraft-[OSCURATO:PERSONA] v [OSCURATO:PERSONA] — Krafft (VITAKRAFT) , T‑356/02, EU:T:2004:292, paragraph 51; of 13 February 2007,

RESPICUR

, T‑256/04, EU:T:2007:46, paragraph 57; and of 8 July 2015,

[OSCURATO:PERSONA]

v [OSCURATO:PERSONA] Construction ([OSCURATO:PERSONA]) , T‑548/12, EU:T:2015:478, paragraph 37). 55 In accordance with the case-law cited in paragraph 54 above, it cannot be ruled out that the English-speaking public is able to identify the word ‘guide’ and ‘go’ in the earlier trade mark too, since the prefix ‘guidi’ resembles the English word ‘guide’.

In such circumstances, the signs are conceptually similar for the English-speaking public. 56 As regards, secondly, the non-English-speaking part of the relevant public, it must be pointed out, as noted by EUIPO, that it has not been established in the present case that the term ‘guide’ is part of the basic English vocabulary likely to be understood by the whole of the general public of the [OSCURATO:PERSONA]. 57 However, it may be possible to identify consumers who have basic knowledge of English in the non-English-speaking part of the relevant public.

Similar considerations to those relating to the English-speaking public, as set out in paragraphs 50 to 55 above, apply to that part of the public. 58 As regards the applicant’s argument that, in essence, there exists in other EU languages, similar words to ‘guide’, it must be pointed out that, in such a case, it cannot be ruled out that the relevant public would also recognise that similar word in the [OSCURATO:PERSONA] sign in accordance with the case-law cited in paragraph 54 above.

The two elements share the prefix ‘guid’ which may make it possible to identify, in each of the signs at issue, a word which is similar to ‘guide’, as was, in essence, noted in paragraph 25 of the contested decision. 59 It follows that, as regards the non-English-speaking part of the relevant public which has no knowledge of English, the [OSCURATO:PERSONA] of Appeal did not err in finding that the conceptual comparison remained neutral.

The likelihood of confusion 60 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered.

Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon , C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74). 61 In the present case, the [OSCURATO:PERSONA] of Appeal concluded that there was a likelihood of confusion within the meaning of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009.

It held, in particular, that the obvious similarity of the signs as regards the elements ‘guidigo’ and ‘guidego’ was sufficient to induce the average consumer to believe that the respective services had the same commercial origin or a related commercial origin.

Similarly, the [OSCURATO:PERSONA] of Appeal rejected the applicant’s argument based on the fact that the signs at issue have different meanings which counteract their visual and phonetic similarities, including for the English-speaking public. 62 As stated above, the services covered by the marks at issue are in part identical and in part similar.

As for the signs at issue, they have an average degree of visual similarity, a high degree of phonetic similarity for at least part of the relevant public and, at best, conceptual differences only for the English-speaking part of the relevant public and for consumers who have basic knowledge of English.

It follows that the [OSCURATO:PERSONA] of Appeal did not err in finding that there was a likelihood of confusion within the meaning of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 for at least part of the relevant public which has no knowledge of English. 63 In that regard, it must be borne in mind that, in accordance with the settled case-law referred to in paragraph 21 above, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 exists in part of the [OSCURATO:PERSONA] 64 Furthermore, the conclusion in paragraph 62 above remains unchanged even in the event that all of the relevant public of the EU is able to understand the dominant element of the mark applied for, but not the only element comprising the earlier mark.

As noted by the intervener, it is not sufficient that there are conceptual differences between the signs in order for the visual and phonetic similarities of the signs to be counteracted to a large extent.

Indeed, for there to be such a counteraction, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning, so that the relevant public is able to grasp it immediately, and the other mark does not have such a meaning or only a totally different meaning (see, to that effect, judgments of 12 January 2006, Ruiz-Picasso and Others v

[OSCURATO:PERSONA]

, C‑361/04 P, EU:C:2006:25, paragraph 20, and of 14 October 2003, Phillips-[OSCURATO:PERSONA] v [OSCURATO:PERSONA] — [OSCURATO:PERSONA] und Einzelhandel (BASS) , T‑292/01, EU:T:2003:264, paragraph 54). 65 In the present case, as correctly observed by the [OSCURATO:PERSONA] of Appeal in paragraph 22 of the contested decision, (see paragraph 51 above), the element ‘guidego’ has no clear and specific meaning. 66 As regards the previous decisions of EUIPO relied on by the applicant, it must be pointed out, as EUIPO has done, that they are irrelevant to the present case in so far as they concern different factual situations. 67 Similarly, it should be noted that, although, in the light of the principles of equal treatment and of sound administration, EUIPO must take account of the decisions already taken and consider with especial care whether it should follow them, the way in which those principles are applied must, however, be consistent with respect for the principle of legality, which precludes a person who files an application for registration of a sign as a trade mark from relying, to his advantage and in order to secure an identical decision, on a possibly unlawful act that was to the advantage of someone else (judgment of 23 October 2015, Hansen v

[OSCURATO:PERSONA] (WIN365)

, T‑264/14, not published, EU:T:2015:803, paragraph 38; see also, to that effect, judgment of 10 March 2011,

[OSCURATO:PERSONA]

v

[OSCURATO:PERSONA]

, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 76). 68 In the present case, as has been stated above, the [OSCURATO:PERSONA] of Appeal correctly held that there was a likelihood of confusion on the part of the relevant public. 69 In the light of all the foregoing, the single plea must be rejected and the action dismissed in its entirety without there being any need to rule on the objection of inadmissibility raised by the intervener or on the admissibility of the applicant’s second head of claim disputed by EUIPO.

Costs 70 [OSCURATO:PERSONA] 134(1) of the Rules of Procedure of the [OSCURATO:PERSONA], the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

Since the applicant has been unsuccessful in the present case, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]),

hereby: 1. Dismisses the action; 2. [OSCURATO:PERSONA], SL to pay the costs. [OSCURATO:PERSONA] in open court in Luxembourg on 13 March 2018. E. Coulon

D. [OSCURATO:PERSONA]

* Language of the case: English.

Anonimizzato ex art. 52 D.Lgs. 196/2003
[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 13 March 2018 ( * ) (EU trade mark — [OSCURATO:PERSONA] proceedings — Application for EU figurative mark Guidego what to do next — Earlier EU word mark [OSCURATO:PERSONA] — Relative ground for refusal — Likelihood of confusion — [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] (EC) No 207/2009 (now [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] (EU) 2017/1001)) [OSCURATO:PERSONA] T‑346/17, [OSCURATO:PERSONA], SL, established in Palma de Mallorca ([OSCURATO:PERSONA]), represented by L. [OSCURATO:PERSONA], lawyer, applicant, v [OSCURATO:PERSONA] (EUIPO), represented by J. Ivanauskas, acting as Agent, defendant, the other party to the proceedings before the [OSCURATO:PERSONA] of Appeal of EUIPO, intervener before the [OSCURATO:PERSONA], being [OSCURATO:PERSONA], established in Paris (France), represented by S. Lipovetsky, lawyer, ACTION brought against the decision of the [OSCURATO:PERSONA] of Appeal of EUIPO of 21 March 2017 ([OSCURATO:PERSONA] R 449/2016-4), relating to opposition proceedings between [OSCURATO:PERSONA] and [OSCURATO:PERSONA], [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of D. [OSCURATO:PERSONA], [OSCURATO:PERSONA], I. [OSCURATO:PERSONA] (Rapporteur) and I. [OSCURATO:PERSONA], [OSCURATO:PERSONA], [OSCURATO:PERSONA]: E. Coulon, having regard to the application lodged at the [OSCURATO:PERSONA] on 31 May 2017, having regard to the response of EUIPO lodged at the [OSCURATO:PERSONA] on 4 August 2017, having regard to the response of the intervener lodged at the [OSCURATO:PERSONA] on 7 August 2017, having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to [OSCURATO:PERSONA] 106(3) of the Rules of Procedure of the [OSCURATO:PERSONA], gives the following [OSCURATO:PERSONA] to the dispute 1 On 6 June 2014, the applicant, [OSCURATO:PERSONA] SL, filed an application for registration of an EU trade mark with the [OSCURATO:PERSONA] (EUIPO) pursuant to [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), as amended (replaced by [OSCURATO:PERSONA] (EU) 2017/1001 of the [OSCURATO:PERSONA] and of the Council of 14 June 2017 on the [OSCURATO:PERSONA] trade mark (OJ 2017 L 154, p. 1)). 2 Registration as a mark was sought for the following figurative sign: 3 The services in respect of which registration was applied for are in Classes 39, 41 and 43 of the [OSCURATO:PERSONA] concerning the [OSCURATO:PERSONA] of Goods and Services for the Purposes of the Registration of [OSCURATO:PERSONA] of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description: –        Class 39: ‘Travel arranging and organising tourist excursions via the internet; agency services for organising excursions and arranging travel via the internet; booking of tickets for travel and excursions via the internet; issuing of tickets for travel and excursions; sightseeing, tour guide and excursion services; booking of package holidays via the internet; consultancy relating to tourist travel; holiday information; provision of travel information, arranging of transport and travel; online information, reservation and booking in the field of tourist travel; rental of vehicles via the internet’. –        Class 41: ‘Entertainment; cultural activities; planning (party -) [entertainment]; shows for recreational or entertainment purposes; tourist entertainment; cultural programmes of tourist trips, holidays, entertainment; organisation of tickets for cultural and entertainment events and shows; provision of information relating to entertainment online from a computer database of the internet; entertainment services provided online from a computer database or the internet’. –        Class 43: ‘Temporary accommodation reservations; making reservations and bookings for restaurants and meals; providing of information relating to temporary accommodation and restaurants online, from a computer database on the internet; rental of temporary accommodation; holiday camp services (accommodation); tourist homes; catering services for the provision of food; services relating to reservation of hotel rooms via travel agencies or intermediaries; providing of information via the internet or via a computer network relating to the booking of temporary accommodation, holiday accommodation and restaurants.’ 4 The EU trade mark application was published in [OSCURATO:PERSONA] 144/2014 of 5 August 2014. 5 On 5 November 2014, the intervener, [OSCURATO:PERSONA], filed a notice of opposition, pursuant to [OSCURATO:PERSONA] 41(1) of [OSCURATO:PERSONA] 207/2009 (now [OSCURATO:PERSONA] 46(1) of [OSCURATO:PERSONA] 2017/1001), to registration of the trade mark applied for, in respect of the services referred to in paragraph 3 above. 6 The opposition was based on the EU word mark [OSCURATO:PERSONA], registered on 15 September 2011 under No 9936584 and designating goods and services in Classes 9, 35, 38, 39, 41, 42 and 45 corresponding, for Classes 39 and 41, to the following description: –        Class 39: ‘Information relating to tourist and cultural tours, via the internet, mobile telephones and digital tablet devices; arrangement of excursions, sightseeing (tourism) and cultural; organisation of geolocated guided tours’. –        Class 41: ‘Providing of training; providing of training; entertainment; sporting and cultural activities; education or entertainment information; leisure facilities; publication of books and tourist guides and cultural; production of tourist and cultural films; rental of sound recordings; video tape editing; photography services; arranging of competitions (education or entertainment); arranging and conducting of colloquiums, lectures or congresses; organisation and holding of exhibitions for cultural or educational purposes; reservation of tickets for shows; games offered online on a computer network; electronic online publication of periodicals and books; micro publishing; organisation of outdoor activities’. 7 The grounds relied on in support of the opposition were those referred to in [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 (now [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 2017/1001). 8 On 7 January 2016, the [OSCURATO:PERSONA] upheld the opposition in its entirety, on the ground that there was a likelihood of confusion within the meaning of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009. 9 On 7 March 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of [OSCURATO:PERSONA] 207/2009 (now Articles 66 to 71 of [OSCURATO:PERSONA] 2017/1001), against the decision of the [OSCURATO:PERSONA]. 10 By decision of 21 March 2017 (‘the contested decision’), the [OSCURATO:PERSONA] of Appeal of EUIPO dismissed the appeal and confirmed that there was a likelihood of confusion. In particular, as regards the comparison of the services, it approved the findings of the [OSCURATO:PERSONA] that they were identical or similar. 11 As regards the comparison of the signs, the [OSCURATO:PERSONA] of Appeal found, first, that the word element ‘guidego’, which will be read as one word, notwithstanding the fact that in English ‘guide’ and ‘go’ exist as separate words, was the most distinctive in the trade mark applied for; secondly, that the signs at issue were visually similar to an average degree; thirdly, that, for at least the French-, Finnish- and Spanish-speaking part of the relevant public, the signs were phonetically highly similar; and, fourthly, that the conceptual comparison remained neutral. Finally, it also rejected the applicant’s argument that the conceptual differences between the signs counteract the visual and phonetic similarities between them, even for an English-speaking public. Forms of order sought 12 The applicant claims that the [OSCURATO:PERSONA] should: –        annul the contested decision; –        consequently, allow the application for registration of the mark applied for. 13 EUIPO contends that the [OSCURATO:PERSONA] should: –        dismiss the application; –        order the applicant to pay the costs. 14 The intervener contends that the [OSCURATO:PERSONA] should: –        dismiss the action and, consequently, reject the application for registration of the mark applied for in its entirety; –        order the applicant to pay the costs. Law 15 The applicant raises a single plea in law, alleging breach of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009. It submits, in essence, that there is no likelihood of confusion in the present case. 16 The applicant criticises the [OSCURATO:PERSONA] of Appeal for having based itself on the incorrect premiss that the word element ‘guidego’ of the mark applied for is ‘fanciful’ and ignored, in that regard, that it is composed of two common English words. It claims that that error vitiated the reasoning of the [OSCURATO:PERSONA] of Appeal regarding the visual, phonetic and conceptual comparison of the signs. In particular, the applicant argues that the fact that the word element of the mark applied for is represented in two different colours makes it possible to observe the two words of which it consists, so that the overall impression conveyed by each sign is different. 17 EUIPO and the intervener challenge the applicant’s assertions. 18 In accordance with [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. 19 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v [OSCURATO:PERSONA] — [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) , T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited). 20 For the purposes of applying [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v [OSCURATO:PERSONA] — easyGroup IP Licensing (easyHotel) , T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited). 21 When the protection of the earlier trade mark extends to the entirety of the [OSCURATO:PERSONA], it is necessary to take into account the perception of the marks at issue by the consumer of the services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 exists in part of the [OSCURATO:PERSONA] (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v [OSCURATO:PERSONA] — [OSCURATO:PERSONA] (VENADO with frame and others) , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited). 22 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v [OSCURATO:PERSONA] — [OSCURATO:PERSONA] (RESPICUR) , T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited). 23 In the present case, the [OSCURATO:PERSONA] of Appeal found, in paragraph 12 of the contested decision, that the relevant public for the services in question was the general public in the [OSCURATO:PERSONA] displaying an average level of attention. That definition, which is not disputed by the parties, is correct and must be upheld. 24 As regards the comparison of the services at issue, the [OSCURATO:PERSONA] of Appeal endorsed, in paragraph 13 of the contested decision, the [OSCURATO:PERSONA] finding that the services in question in Classes 39, 41 and 43 were in part identical and in part similar. That finding, which is moreover not disputed by the parties, is correct and must be upheld. The comparison of the signs 25 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, [OSCURATO:PERSONA] v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited). 26 The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, [OSCURATO:PERSONA] v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, [OSCURATO:PERSONA] v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007, Nestlé v [OSCURATO:PERSONA] , C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v [OSCURATO:PERSONA] , C‑193/06 P, not published, EU:C:2007:539, paragraph 43). On the dominant and distinctive element of the sign applied for and its perception by the relevant public 27 As regards the mark applied for, the [OSCURATO:PERSONA] of Appeal stated, in paragraph 17 of the contested decision, that it consists of the word element ‘guidego’, written in green and dark blue, of the word sequence ‘what to do next’, written below in dark blue and in smaller typeface, and of a figurative element placed to the left of the element ‘guidego’ consisting of a dark blue circle in which a green figurative element in the shape of a water drop is placed horizontally. It concluded, in paragraph 18 of the contested decision, that the element ‘guidego’ was the more distinctive. 28 It must be held, as noted by the [OSCURATO:PERSONA] of Appeal, that the element ‘guidego’, because of its size and its position in the sign applied for, must be regarded as being the dominant element of that sign. On the other hand, contrary to what the intervener maintains, the other elements which make up the sign applied for are not negligible, as a result of which they must not be disregarded in evaluating the signs in question. 29 As regards the perception of the element ‘guidego’, the [OSCURATO:PERSONA] of Appeal held, in paragraph 17 of the contested decision, that, although it was written in two different colours, and despite the fact that the words ‘guide’ and ‘go’ exist in English, it will still be read in one word, in particular because the colours are not significantly different. 30 The applicant disputes that assessment and submits that the word element ‘guidego’ is a juxtaposition of the English words ‘guide’ and ‘go’ and that the use of different colours allows the relevant public to distinguish between those two words, even if they are combined. 31 EUIPO contends that the element ‘guidego’ will be understood as a fanciful term and as being a single word because, despite the use of colours, there is nothing to indicate that that element could be divided into ‘guide’ and ‘go’. 32 As the applicant submits, it must be pointed out that the dominant element of the sign requested is the result of a juxtaposition of two words and that the use of different colours makes it possible to perceive them. In that regard, it is irrelevant that the colours used are common, as EUIPO submits, since the contrast between them makes it possible to distinguish between the words making up the word element ‘guidego’. Moreover, when examining the sign applied for, it should be noted that, between the two components of the dominant element, there is a space which will underline the perception that that element is composed of two words. It follows that the [OSCURATO:PERSONA] of Appeal erred in finding that the element ‘guidego’ of the sign applied for would be read as a single word. 33 However, that conclusion is without prejudice to the conceptual comparison of the signs, since the fact that consumers distinguish between the two words which make up the element ‘guidego’ does not mean that they will necessarily be able to understand them. Visual comparison 34 As regards the visual comparison, it must be pointed out, first, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v [OSCURATO:PERSONA] — [OSCURATO:PERSONA] TV ([OSCURATO:PERSONA]) , T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited). 35 In the present case, the [OSCURATO:PERSONA] of Appeal found, in paragraph 20 of the contested decision, that the signs at issue were similar to an average degree. In particular, it held that the dominant element of the sign applied for and the sign comprising the earlier mark consisted of seven letters of which six coincided, and that the only difference concerned their central vowel. As to the visual elements, the [OSCURATO:PERSONA] of Appeal held that the colour and font used were neither significant nor highly stylised and that the figurative element had a fairly simple geometric layout. 36 The applicant disputes that assessment, claiming that the signs at issue differ in their structure and that the mere fact that they share a number of characteristics would be insufficient for them to be considered visually similar. 37 In the present case, it should be noted, as observed by the [OSCURATO:PERSONA] of Appeal, that the sign comprising the earlier mark and the dominant element of the mark applied for are similar to the extent that they coincide in six out of seven letters and differ only in the central vowel. Similarly, the degree of stylisation of the word element and the additional elements of the mark applied for do not counteract the similarities between the signs, as a result of which they are similar to an average degree. 38 That degree of similarity exists regardless of whether the element ‘guidego’ is perceived as two separate words or as a single element, so that the error committed by the [OSCURATO:PERSONA] of Appeal in paragraph 17 of the contested decision is irrelevant as regards the visual comparison of the signs. Phonetic comparison 39 As regards the phonetic comparison of the signs, the [OSCURATO:PERSONA] of Appeal found, in essence, in paragraph 21 of the contested decision, that only the elements ‘guidigo’ and ‘guidego’ are pronounced, since the combination of words ‘what to do next’ was written in characters too small to be spoken. According to the [OSCURATO:PERSONA] of Appeal, the elements ‘guidigo’ and ‘guidego’ are not existing words and are pronounced almost identically by the French-, Finnish- and Spanish-speaking part of the relevant public, with the result that the signs at issue have a high degree of phonetic similarity for at least that part of the relevant public. 40 The applicant claims that the mark applied for will be pronounced in six syllables, whereas the earlier mark will be pronounced in four or five, depending on the situation, and that the rhythm and intonation of the signs at issue differs significantly since the requested sign will be pronounced as in English, while the sign constituting the mark will be pronounced as an invented word. 41 In the present case, the [OSCURATO:PERSONA] of Appeal’s finding that there is a high degree of phonetic similarity in so far as the pronunciation of the elements ‘guidigo’ and ‘guidego’ is very similar must be upheld. 42 First of all, it must be held that, even if the findings of the [OSCURATO:PERSONA] of Appeal that the words ‘what to do next’ in the sign applied for were written in characters that are too small to be spoken are not correct, the fact remains that, to the extent that those words are written in much smaller typeface, they will probably not be spoken. In that regard, it is also necessary to take into account the natural tendency of consumers to shorten long signs (see judgment of 4 May 2016, [OSCURATO:PERSONA] & [OSCURATO:PERSONA] v EUIPO [OSCURATO:PERSONA] ([OSCURATO:PERSONA] & [OSCURATO:PERSONA]) , T‑193/15, not published, EU:T:2016:266, paragraph 60 and the case-law cited). 43 Next, it should be noted that the sign [OSCURATO:PERSONA] is a fanciful term, whereas the element ‘guidego’ is a juxtaposition of two English words. However, that fact is not sufficient to make it possible to consider that the difference in pronunciation of the two distinctive elements would be significant. 44 Even if, as the applicant submits, the element ‘guidego’ is pronounced according to the rules of English pronunciation, whereas the [OSCURATO:PERSONA] sign is pronounced according to the rules of pronunciation of the mother tongue of the consumer other than English, that possible difference is relevant only in respect of the part of the relevant public whose mother tongue is not English, but who does speak English. It follows that the [OSCURATO:PERSONA] of Appeal’s finding is in any event correct, at least as regards the non-English-speaking section of the relevant public. 45 Moreover, it should be noted that, even if the foreign origin of the word is recognised by the public, it may not be pronounced in the same manner as in the original language (see, to that effect, judgment of 1 February 2005, SPAG v [OSCURATO:PERSONA] — Dann and Backer (HOOLIGAN) , T‑57/03, EU:T:2005:29, paragraph 58). Thus, even if all members of the general public of the [OSCURATO:PERSONA] recognise the element ‘guidego’ as the juxtaposition of two English words, it cannot be argued that the whole of that public will pronounce that element according to the rules of English pronunciation. 46 In addition, it should be borne in mind that, as regards the phonetic comparison of the signs, it is necessary to disregard their meaning, as those considerations are relevant to the conceptual comparison (see, to that effect, judgment of 4 June 2013, i-content v [OSCURATO:PERSONA] — Decathlon (BETWIN) , T‑514/11, EU:T:2013:291, paragraph 54 (not published)). 47 Finally, it should be noted that the fact that there is a space between the two words composing the dominant element of the sign applied for does not affect its pronunciation in the present case (see, to that effect, judgment of 21 September 2017, [OSCURATO:PERSONA] v EUIPO — [OSCURATO:PERSONA] (Idealogistic) , T‑620/16, not published, EU:T:2017:635, paragraph 65). Conceptual comparison 48 As regards the conceptual comparison of the signs at issue, the [OSCURATO:PERSONA] of Appeal found, in paragraph 22 of the contested decision, that it remained neutral since neither ‘guidego’ or ‘guidigo’ had any meaning for the relevant public. Admittedly, at that stage of its reasoning, it noted that the element ‘guidego’ consisted of the English words ‘guide’ and ‘go’, but found that, considered as a whole, that element had no meaning and that it was devoid of any meaning for the non-English-speaking part of the relevant public. 49 The applicant claims that the sign applied for consists of a juxtaposition of the common English words ‘guide’ and ‘go’ followed by the words ‘what to do next’ which are likely to be understood by [OSCURATO:PERSONA] consumers. The applicant refers, in particular, to the case-law according to which the average consumer in the EU [OSCURATO:PERSONA] may understand a number of basic English words. In addition, the word ‘guide’ exists in other [OSCURATO:PERSONA] countries in a very similar spelling. According to the applicant, the two signs differ conceptually. 50 As regards, first, the English-speaking part of the relevant public, it must be held that it will include all the elements composing the sign applied for. As has already been stated in paragraph 32 of the present judgment, the dominant element of the mark applied for is composed of the two English words ‘guide’, meaning, inter alia, ‘lead, guide, show the way’, and ‘go’, meaning ‘move, travel, pass along’. The same is true for the combination of words ‘what to do next’. 51 By contrast, as rightly found by the [OSCURATO:PERSONA] of Appeal, the element ‘guidego’, taken as a whole, does not convey a clear concept. 52 With regard to the sign constituting the earlier mark ‘guidigo’, as rightly found by the [OSCURATO:PERSONA] of Appeal, it is a fanciful word which has no meaning for the relevant public. 53 It follows that, for the English-speaking part of the relevant public, the signs are conceptually different. 54 However, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, while perceiving a word sign, he will identify the elements which, for him, suggest a concrete meaning or resemble words known to him (judgments of 6 October 2004 in Vitakraft-[OSCURATO:PERSONA] v [OSCURATO:PERSONA] — Krafft (VITAKRAFT) , T‑356/02, EU:T:2004:292, paragraph 51; of 13 February 2007, RESPICUR , T‑256/04, EU:T:2007:46, paragraph 57; and of 8 July 2015, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] Construction ([OSCURATO:PERSONA]) , T‑548/12, EU:T:2015:478, paragraph 37). 55 In accordance with the case-law cited in paragraph 54 above, it cannot be ruled out that the English-speaking public is able to identify the word ‘guide’ and ‘go’ in the earlier trade mark too, since the prefix ‘guidi’ resembles the English word ‘guide’. In such circumstances, the signs are conceptually similar for the English-speaking public. 56 As regards, secondly, the non-English-speaking part of the relevant public, it must be pointed out, as noted by EUIPO, that it has not been established in the present case that the term ‘guide’ is part of the basic English vocabulary likely to be understood by the whole of the general public of the [OSCURATO:PERSONA]. 57 However, it may be possible to identify consumers who have basic knowledge of English in the non-English-speaking part of the relevant public. Similar considerations to those relating to the English-speaking public, as set out in paragraphs 50 to 55 above, apply to that part of the public. 58 As regards the applicant’s argument that, in essence, there exists in other EU languages, similar words to ‘guide’, it must be pointed out that, in such a case, it cannot be ruled out that the relevant public would also recognise that similar word in the [OSCURATO:PERSONA] sign in accordance with the case-law cited in paragraph 54 above. The two elements share the prefix ‘guid’ which may make it possible to identify, in each of the signs at issue, a word which is similar to ‘guide’, as was, in essence, noted in paragraph 25 of the contested decision. 59 It follows that, as regards the non-English-speaking part of the relevant public which has no knowledge of English, the [OSCURATO:PERSONA] of Appeal did not err in finding that the conceptual comparison remained neutral. The likelihood of confusion 60 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon , C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74). 61 In the present case, the [OSCURATO:PERSONA] of Appeal concluded that there was a likelihood of confusion within the meaning of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009. It held, in particular, that the obvious similarity of the signs as regards the elements ‘guidigo’ and ‘guidego’ was sufficient to induce the average consumer to believe that the respective services had the same commercial origin or a related commercial origin. Similarly, the [OSCURATO:PERSONA] of Appeal rejected the applicant’s argument based on the fact that the signs at issue have different meanings which counteract their visual and phonetic similarities, including for the English-speaking public. 62 As stated above, the services covered by the marks at issue are in part identical and in part similar. As for the signs at issue, they have an average degree of visual similarity, a high degree of phonetic similarity for at least part of the relevant public and, at best, conceptual differences only for the English-speaking part of the relevant public and for consumers who have basic knowledge of English. It follows that the [OSCURATO:PERSONA] of Appeal did not err in finding that there was a likelihood of confusion within the meaning of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 for at least part of the relevant public which has no knowledge of English. 63 In that regard, it must be borne in mind that, in accordance with the settled case-law referred to in paragraph 21 above, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of [OSCURATO:PERSONA] 8(1)(b) of [OSCURATO:PERSONA] 207/2009 exists in part of the [OSCURATO:PERSONA] 64 Furthermore, the conclusion in paragraph 62 above remains unchanged even in the event that all of the relevant public of the EU is able to understand the dominant element of the mark applied for, but not the only element comprising the earlier mark. As noted by the intervener, it is not sufficient that there are conceptual differences between the signs in order for the visual and phonetic similarities of the signs to be counteracted to a large extent. Indeed, for there to be such a counteraction, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning, so that the relevant public is able to grasp it immediately, and the other mark does not have such a meaning or only a totally different meaning (see, to that effect, judgments of 12 January 2006, Ruiz-Picasso and Others v [OSCURATO:PERSONA] , C‑361/04 P, EU:C:2006:25, paragraph 20, and of 14 October 2003, Phillips-[OSCURATO:PERSONA] v [OSCURATO:PERSONA] — [OSCURATO:PERSONA] und Einzelhandel (BASS) , T‑292/01, EU:T:2003:264, paragraph 54). 65 In the present case, as correctly observed by the [OSCURATO:PERSONA] of Appeal in paragraph 22 of the contested decision, (see paragraph 51 above), the element ‘guidego’ has no clear and specific meaning. 66 As regards the previous decisions of EUIPO relied on by the applicant, it must be pointed out, as EUIPO has done, that they are irrelevant to the present case in so far as they concern different factual situations. 67 Similarly, it should be noted that, although, in the light of the principles of equal treatment and of sound administration, EUIPO must take account of the decisions already taken and consider with especial care whether it should follow them, the way in which those principles are applied must, however, be consistent with respect for the principle of legality, which precludes a person who files an application for registration of a sign as a trade mark from relying, to his advantage and in order to secure an identical decision, on a possibly unlawful act that was to the advantage of someone else (judgment of 23 October 2015, Hansen v [OSCURATO:PERSONA] (WIN365) , T‑264/14, not published, EU:T:2015:803, paragraph 38; see also, to that effect, judgment of 10 March 2011, [OSCURATO:PERSONA] v [OSCURATO:PERSONA] , C‑51/10 P, EU:C:2011:139, paragraphs 73 to 76). 68 In the present case, as has been stated above, the [OSCURATO:PERSONA] of Appeal correctly held that there was a likelihood of confusion on the part of the relevant public. 69 In the light of all the foregoing, the single plea must be rejected and the action dismissed in its entirety without there being any need to rule on the objection of inadmissibility raised by the intervener or on the admissibility of the applicant’s second head of claim disputed by EUIPO. Costs 70 [OSCURATO:PERSONA] 134(1) of the Rules of Procedure of the [OSCURATO:PERSONA], the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful in the present case, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), hereby: 1. Dismisses the action; 2. [OSCURATO:PERSONA], SL to pay the costs. [OSCURATO:PERSONA] in open court in Luxembourg on 13 March 2018. E. Coulon D. [OSCURATO:PERSONA] * Language of the case: English.
Sentenza Corte di giustizia UE n. 207/2018 — Fons Iuris — Fons Iuris