The judgment concerns an appeal against a decision of the Board of Appeal of the EUIPO relating to opposition proceedings concerning an application for registration of an EU trade mark requested for a figurative sign the dominant element of which is the result of a juxtaposition of two words English (“guidego”), where the opposition was based on a similar earlier EU word mark (“GUIDIGO”) for services deemed partly identical and partly similar.

First of all, recalling the jurisprudence of the Court of Justice of the EU, the Court stated that the evaluation of the similarity between two trademarks means more than just taking one component of a composite trademark and comparing it with another trademark. 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 produced on the relevant public by a composite mark cannot, in certain circumstances, be dominated by one more of its components . Only if all the other components of the mark are negligible can the assessment of similarity be carried out solely on the basis of the dominant element. This could be the case, in particular, where that component is capable, on its own, of dominating the image of that mark that members of the relevant public retain, with the result that all other components are negligible in the overall impression created by that brand name.

In this regard, the Court recognized that the dominant element of the requested sign is the result of a juxtaposition of two English words and that the use of different colors allows them to be perceived.

However, with reference to the conceptual comparison of the signs, the Court stated that the fact that consumers distinguish between the two words that form the element “guidego” does not mean that they will necessarily be able to understand them.

As regards the visual comparison, still recalling the jurisprudence of the Court of Justice of the EU, the Court underlined that nothing prevents a determination regarding the possible presence of visual similarity between a word mark and a figurative mark, since the two types trademarks have a graphic form capable of creating a visual impression.

In this case, the Court held that the sign including the earlier trademark and the dominant element of the trademark requested 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 stylization of the verbal element and the additional elements of the mark applied for do not neutralize the similarities between the signs, as a result of which they are similar to an average degree.

This degree of similarity exists regardless of whether the element “guidego” is perceived as two separate words or as a single element.

Furthermore, the Court found that there is a high degree of phonetic similarity as the pronunciation of the elements 'guidigo' and 'guidego' is very similar.

Although the requested sign included additional words written in much smaller characters, recalling the jurisprudence of the Court of Justice of the EU, the Court stated that they are unlikely to be pronounced, and that it is also necessary to take into account the natural tendency of consumers to abbreviate the verbose signs.

Furthermore, the Court held that, although the sign GUIDIGO is an imaginative term, while the element 'guidego' is a juxtaposition of two English words, this circumstance is not sufficient to allow it to be considered that the difference in pronunciation of the two elements badges would be significant, at least as far as the non-English speaking section of the relevant audience is concerned.

In fact, even if the element “guidego” is pronounced according to the rules of English pronunciation, while the sign GUIDIGO is pronounced according to the rules of pronunciation of the consumer's mother tongue other than English, this possible difference is relevant only with respect to the part of relevant audience whose native language is not English, but who speaks English.

Therefore, even if all members of the general public of the European Union recognized the element “guidego” as a juxtaposition of two English words, the Court held that it cannot be argued that the entirety of that public will pronounce that element according to the rules of English pronunciation.

Furthermore, recalling the jurisprudence of the Court of Justice of the EU, the Court stated that it must be remembered that, regarding the phonetic comparison of signs, it is necessary to ignore their meaning, since such considerations are relevant for the conceptual comparison.