Judgment — ECLI:EU:T:2026:50
Date: 2026-01-28
Language of the case: English
Court formation: Sixth Chamber
Procedure: Action for annulment
Origin: Spain

summary of the pleas in law on which the application is based. That information must be sufficiently clear and precise to enable the defendant to prepare his or her defence and the Court to rule on the action, even without any other information (see judgment of 21 April 2004, Concept v OHIM (ECA), T‑127/02, EU:T:2004:110, paragraph 17 and the case-law cited). In order to guarantee legal certainty and sound administration of justice, it is necessary, for an action to be admissible, that the basic legal and factual particulars on which it is based be indicated, at least in summary form, coherently and intelligibly in the application itself (order of 8 July 2010, Strålfors v OHIM (ID SOLUTIONS), T‑211/10, not published, EU:T:2010:301, paragraph 5). 33 It is apparent from the case-law that requirements similar to those referred to in paragraph 32 above apply where a claim or an argument is relied on in support of a plea in law (judgments of 9 July 2010, Grain Millers v OHIM – Grain Millers (GRAIN MILLERS), T‑430/08, not published, EU:T:2010:304, paragraph 38, and of 8 November 2017, Pempe v EUIPO – Marshall Amplification (THOMAS MARSHALL GARMENTS OF LEGENDS), T‑271/16, not published, EU:T:2017:787, paragraph 86). 34 It follows that the applicant’s general allegation concerning the relationship between the goods and services covered by the marks at issue is not such as to invalidate the findings of the Board of Appeal, which, in any event, do not involve any error of assessment. Comparison of the signs at issue 35 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, bearing in mind, in particular, 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 that 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, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited). 36 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 15 November 2023, Portal Golf Gestión v EUIPO – Augusta National (imaster.golf), T‑677/22, not published, EU:T:2023:720, paragraph 58 and the case-law cited). 37 In the present case, before addressing the question of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the marks at issue. – The distinctive and dominant elements of the signs at issue 38 The Board of Appeal held, in paragraphs 31, 34 and 54 of the contested decision, that, for the relevant public in relation to both the earlier EU trade mark and the earlier German trade mark, the word mark applied for would be perceived as a combination of the elements ‘telo’ and ‘tron’, rather than as a unitary whole. It justified that assessment by pointing out, first, that the element ‘telo’ was used in scientific terminology in both English and German as a prefix and, secondly, that the element ‘tron’ had several meanings in English, both as a standalone word and as a suffix, but none in German, although those meanings could be understood by German-speaking members of the public with a knowledge of English. The Board of Appeal concluded that those two elements were distinctive and had equal weight in the overall impression produced by the sign constituting the mark applied for. 39 The applicant submits that, contrary to the Board of Appeal’s assessment, the relevant public will not break down the mark applied for into two elements, ‘telo’ and ‘tron’, because the meaning of those elements is not known to that public and they are not visibly separated. Therefore, according to the applicant, the relevant public perceives the sign applied for as a unitary whole and the mark applied for should be assessed as a whole. 40 EUIPO disputes the applicant’s arguments. 41 In the first place, as regards possible dominant elements in the marks at issue, it should be observed that, according to the case-law, word marks consist entirely of letters, words or associations of words which are written in printed characters in a normal font without any specific graphic element. Such marks therefore do not have a dominant element since, by their nature, none of the constituent elements has a particular graphic or stylistic aspect which is capable of giving it such a character (see judgment of 2 March 2022, UGA Nutraceuticals v EUIPO – Vitae Health Innovation (VITADHA), T‑149/21, not published, EU:T:2022:103, paragraph 79 and the case-law cited). 42 It must therefore be stated that, since the marks at issue are word marks, none of them contains dominant elements. 43 In the second place, according to the case-law, for the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 1 June 2022, Krasnyj Octyabr v EUIPO – Pokój (Pokój TRADYCJA JAKOŚĆ KRÓWKA SŁODKIE CHWILE Z DZIECIŃSTWA TRADYCYJNA RECEPTURA), T‑355/20, not published, EU:T:2022:320, paragraph 41 and the case-law cited). 44 It must also be observed that, while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, he or she will nevertheless, perceiving a word sign, break it down into verbal elements which, for him or her, suggest a concrete meaning or resemble words known to him or her (see, to that effect, judgments of 6 October 2004, Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 51, and of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57). Moreover, the relevant consumer will break the word sign down into elements even if only one of its elements is familiar to him or her (see, to that effect, judgment of 19 September 2012, TeamBank v OHIM – Fercredit Servizi Finanziari (f@ir Credit), T‑220/11, not published, EU:T:2012:444, paragraph 38 and the case-law cited). 45 First, with regard to the term ‘tron’, which constitutes the earlier marks and the second element of the mark applied for, the Board of Appeal rightly held, in paragraph 33 of the contested decision, on the basis of the Collins English Dictionary, that that term served as a suffix indicating a ‘vacuum tube’ or an ‘instrument for accelerating atomic or subatomic particles’, and that that meaning would be extended to the term ‘trón’ by at least a non-negligible part of the English-speaking public. It follows that the specialist public in the fields of medicine and biotechnology concerned by the earlier EU trade mark is likely to attribute the above meaning to the element ‘tron’ or ‘trón’, or, at the very least, to be familiar with it. Furthermore, although that term has no meaning in German, the same conclusion applies to the relevant public of the earlier German mark, namely the specialist public in the field of healthcare, which is exposed to English technical and scientific terms, as the goods in question belong to a scientific and technical field in which that language is commonly used. 46 Secondly, as regards the verbal element ‘telo’ of the mark applied for, as stated in paragraph 32 of the contested decision, it is used as the prefix ‘telo’ to designate something ‘complete; final; perfect’ or ‘at the end’, and it frequently appears in biological terminology, for example in terms such as ‘telocentric’, ‘telogen’, ‘telomere’ and ‘telophase’. Furthermore, as the Board of Appeal pointed out in paragraph 54 of the contested decision, according to the Brockhaus online dictionary, that prefix has the same meaning in German as in English. On that basis, it was entitled to conclude, in essence, that the relevant public was likely to be familiar with the prefix ‘telo’. 47 Thirdly, it should also be stated that, although the meaning of each of the elements comprising the mark applied for is understandable to the relevant public or, at least, familiar to it, the same cannot be said of the compound term formed by combining them, which has no independent meaning, as was pointed out, in essence, by the Board of Appeal in paragraphs 34 and 40 of the contested decision. 48 It follows that, contrary to what the applicant submits, on the one hand, the relevant public is likely to break down the mark applied for into ‘telo’ and ‘tron’ and, on the other hand, the lack of any visual separation between those elements does not prevent it from identifying the elements ‘telo’ and ‘tron’, since, as has already been observed, those elements may have meanings for that public (see, to that effect, judgment of 13 July 2022, Tigercat International v EUIPO – Caterpillar (Tigercat), T‑251/21, not published, EU:T:2022:437, paragraph 45). 49 Fourthly, given that neither the element ‘telo’ nor the element ‘tron’ has any direct connection with the goods and services covered by the marks at issue, it must be held that those two elements have average distinctiveness. – Visual and phonetic comparison of the signs at issue 50 The Board of Appeal held, in paragraphs 39 and 55 of the contested decision, that the signs at issue had an average degree of visual and phonetic similarity. 51 The applicant submits that the signs at issue are visually and phonetically different, since the marks at issue are composed of distinct words with a different number of letters and syllables. It also states that, in the case of short word marks, the relevant public is more likely to notice the differences, and accordingly that the initial element ‘telo’ creates a different overall impression of the mark applied for. It adds, lastly, that consumers find it easier to remember the first syllables of words. 52 EUIPO disputes the applicant’s arguments. 53 It should be stated that, both visually and phonetically, the signs at issue share the word element ‘tron’, which appears in the mark applied for in the form ‘trón’, the only difference being the acute accent on the letter ‘o’. In that regard, it should be noted that, due to its small size and incidental nature, that accent cannot be regarded as a sufficiently striking difference to neutralise the impression of similarity resulting from the coincidence between ‘tron’ and ‘trón’ (see, by analogy, judgment of 6 November 2014, Popp and Zech v OHIM – Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 119). 54 Furthermore, they differ in that the word element ‘telo’ is present only in the mark applied for, in which it is placed at the beginning. 55 In that regard, it is true, as the applicant submits, that according to the case-law, the initial part of word marks may be capable of attracting the attention of the consumer more than the following parts. However, that consideration cannot prevail in every case and cannot, in any event, call into question the principle that the assessment of the similarity of the signs must take account of the overall impression given by them (see judgment of 10 March 2016, credentis v OHIM – Aldi Karlslunde (Curodont), T‑53/15, not published, EU:T:2016:136, paragraph 35 and the case-law cited). 56 In addition, it must be borne in mind that where an earlier mark is entirely contained in the mark applied for, that fact constitutes an indication that the two marks are similar (see, to that effect, judgment of 11 June 2014, Klingel v OHIM – Develey (JUNGBORN), T‑401/12, not published, EU:T:2014:507, paragraph 27 and the case-law cited). As the Board of Appeal observed in paragraph 39 of the contested decision, and for the reasons set out in paragraph 47 above, the relevant public will be able to distinguish the earlier mark within the sign constituting the mark applied for. 57 In the present case, it should be stated that neither the initial part of the mark applied for nor its second part, which it has in common with the earlier marks, is capable of attracting the attention of the relevant public to a greater extent. Indeed, for the reasons set out in paragraphs 43 to 49 above, no element of the mark applied for is more distinctive than any other. 58 Thus, in view of all the relevant circumstances, given that the word element ‘tron’, which is the sole component of the earlier marks, is included in its entirety in the contested mark, albeit with an accent on the letter ‘o’, and that they differ only in the presence of the element ‘telo’ in the mark applied for, it must be held that the signs at issue are partially identical in such a manner as to create, in the mind of the relevant public, an impression of an average degree of visual and phonetic similarity (see, by analogy, judgment of 27 October 2021, Jiruš v EUIPO – Nile Clothing (Racing Syndicate), T‑356/20, not published, EU:T:2021:736, paragraph 69). 59 The applicant also submits that, in the case of short word marks, even slight differences are sufficient to rule out any similarity. However, the mark applied for consists of eight letters and three syllables, and thus cannot be described as being particularly short. Furthermore, a difference between the marks in terms of the number of letters or syllables does not, in itself, prevent them from being similar where they coincide in an identical and distinctive element. In any event, what remains decisive is the overall impression produced by the signs, as has been stated in paragraph 35 above. In those circumstances, the applicant’s argument cannot succeed. 60 Consequently, contrary to the applicant’s submission, the difference arising from the presence of the word element ‘telo’, despite its position at the beginning of the mark applied for, is not such as to eliminate the visual and phonetic similarities arising from the coincidence of the term ‘tron’ or ‘trón’. 61 It should also be stated that, as the Board of Appeal rightly observed in paragraph 39 of the contested decision, with regard to the pronunciation of the mark applied for, the part of the relevant public that perceives the acute accent on the letter ‘o’ as a stress mark will place the main stress on the final syllable ‘trón’, rather than on the initial syllables ‘te’ or ‘lo’, when pronouncing ‘telotrón’. Consequently, for that part of the relevant public, that pronunciation further reinforces the phonetic similarity with the earlier marks. 62 Having regard to the foregoing, it must be held that the Board of Appeal did not make any error of assessment when it found, in paragraph 39 of the contested decision, that the signs at issue were visually and phonetically similar to an average degree. – Conceptual comparison of the signs at issue 63 The Board of Appeal concluded, in paragraph 40 of the contested decision, that the mark applied for as a whole had no meaning, but that, for the relevant public, when assessing the likelihood of confusion between the mark applied for and the earlier EU mark, the signs at issue were conceptually similar in that they coincided in the meaning of the common element ‘tron’. With regard to the relevant public for the purposes of assessing the likelihood of confusion between the mark applied for and the earlier German mark, the Board of Appeal reached the same conclusion, in paragraph 55 of the contested decision, with regard to the part of that public that is likely to attribute a meaning to the element ‘tron’ or ‘trón’. 64 The applicant challenges those findings of the Board of Appeal, arguing that the signs at issue must be assessed as a whole and not by separating their constituent elements. It adds that it was not justified to break down the sign applied for, because the element ‘telo’ has no meaning for the general public. Lastly, it states that the signs at issue are not conceptually similar, as they have no meaning. 65 EUIPO disputes the applicant’s arguments. 66 According to settled case-law, in order to be similar, the signs at issue must coincide as to their semantic content (see, to that effect, judgment of 14 May 2025, Biogena v EUIPO – ACRAF (BIOGENA MOMENTS), T‑418/24, not published, EU:T:2025:491, paragraph 74). 67 Furthermore, whereas it is true that the assessment of the similarity of signs must be based on the overall impression they produce and that the average consumer normally perceives a trade mark as a whole and does not proceed to examine its various details, it remains the case that, according to the case-law referred to in paragraph 44 above, the consumer, encountering a word sign, may break it down into elements having a concrete meaning or resembling familiar words, even if only one element is familiar to him or her. 68 In the present case, first, for the reasons set out in paragraphs 21 and 28 above, it is not necessary to take into account the perception of the general public in relation to the earlier EU trade mark, and there is thus no need to examine the applicant’s arguments relating to the way in which the element ‘telo’, in the mark applied for, would be understood by a non-specialist public. 69 Secondly, with regard to specialist publics, for the reasons set out in paragraphs 45 and 47 above, although the mark applied for, taken as a whole, has no meaning, the fact remains that they will be able to understand the meaning of the element ‘tron’ or ‘trón’ that is common to the signs at issue, and thus that those signs are conceptually similar for those publics (see, to that effect, judgment of 21 February 2024, Hong Kong NetEase Interactive Entertainment v EUIPO – Medion (LifeAfter), T‑175/23, not published, EU:T:2024:109, paragraph 82). Likelihood of confusion 70 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 trademarks and the similarity of the goods or services concerned. 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). 71 It is also clear from the case-law that the average consumer only rarely has a chance to compare the various marks directly, but must rely on his or her imperfect recollection of them (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 60 and the case-law cited). It has been confirmed that that also applies to a public demonstrating a high level of attention (see judgment of 6 November 2024, CFA Institute v EUIPO – Global Chartered Controller Institute (CCA CHARTERED CONTROLLER ANALYST CERTIFICATE), T‑561/22, not published, EU:T:2024:777, paragraph 176 and the case-law cited). 72 In the first place, the Board of Appeal determined that there was a likelihood of confusion based on the earlier EU word mark for the goods and services in Classes 5 and 44, which it held to be identical or similar, given the average degree of visual and phonetic similarity between the signs at issue and the average distinctiveness of the earlier mark, and despite the high level of attention paid by the relevant public when purchasing the goods and services at issue. It also held that the element ‘tron’ retained an independent distinctive role within the sign applied for, so that the addition of the prefix ‘telo’ was insufficient to exclude a likelihood of confusion. In the second place, with regard to the goods covered by the mark applied for, falling within Class 9, the Board of Appeal found that there was a likelihood of confusion based on the earlier German word mark, given the identity of the goods, the average degree of visual and phonetic similarity between the signs at issue, the average distinctiveness of the earlier mark, the average level of attention of the relevant public and the independent distinctive role retained by the element ‘tron’ within the sign applied for. In the third place, it also rejected the applicant’s argument based on peaceful coexistence, both in relation to the earlier EU mark and in relation to the earlier German mark. 73 The applicant challenges the Board of Appeal’s conclusions as regards both the earlier EU mark and the earlier German mark, arguing, on the one hand, that there is no likelihood of confusion because of the differences between the signs at issue and, on the other hand, that the Board of Appeal gave insufficient weight to the fact that there are numerous registered marks incorporating the element ‘tron’, such that the relevant public would not associate the sign applied for, TELOTRÓN, with the earlier marks. 74 EUIPO disputes the applicant’s arguments. 75 First, it should be noted that the applicant does not challenge the Board of Appeal’s finding that the earlier marks had average intrinsic distinctiveness, which must in any event be affirmed given that those marks have no meaning in relation to the goods and services at issue. 76 Secondly, for the reasons set out in paragraphs 30 to 34 above, the goods and services at issue must be considered to be partly identical and partly similar, and for the reasons set out in paragraphs 35 to 69 above, the signs at issue must be considered to be visually, phonetically and conceptually similar. 77 Thirdly, it follows that the Board of Appeal was correct, at least as regards the specialist public, to find, in paragraph 47 of the contested decision, that there was a likelihood of confusion in relation to the goods and services covered by the mark applied for and falling, respectively, within Classes 5 and 44, despite the high level of attention paid by that public when purchasing those goods and services. 78 The fact that the level of attention of the relevant public is high does not permit an automatic conclusion that there is no likelihood of confusion, since all the other factors must be taken into account (see, to that effect, judgment of 28 April 2016, Zehnder Group International v EUIPO – Stiebel Eltron (comfotherm), T‑267/14, not published, EU:T:2016:252, paragraph 72 and the case-law cited; judgment of 13 July 2017, Migros-Genossenschafts-Bund v EUIPO – Luigi Lavazza (CReMESPRESSO), T‑189/16, not published, EU:T:2017:488, paragraph 87). 79 Fourthly, it should be noted that the finding, reached by the Board of Appeal in paragraph 56 of the contested decision, that there would be a likelihood of confusion if the mark applied for were to be registered in respect of software in Class 9, is all the more compelling for the fact that the relevant public is considered to pay an average level of attention. 80 Fifthly – and lastly – those findings cannot be invalidated, in the present case, by the argument raised by the applicant on the basis of the alleged coexistence of marks containing the element ‘tron’. 81 In that regard, it should be noted that, according to the case-law, even if it cannot be ruled out that, in certain cases, the coexistence of earlier trade marks on the market may possibly eliminate or reduce the likelihood of confusion between two conflicting trade marks, it is nevertheless necessary, first, that, during the proceedings concerning the relative grounds for refusal before EUIPO, the applicant for the EU trade mark must have duly demonstrated that that coexistence was based on the absence of a likelihood of confusion, in the mind of the relevant public, between the earlier trade marks relied on by him or her and the earlier trade mark on which the opposition is based and, secondly, that the earlier trade marks relied on by the trade mark applicant and the conflicting trade marks are identical (judgments of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 72; of 18 September 2012, Scandic Distilleries v OHIM – Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 60; and of 21 June 2023, International British Education XXI v EUIPO – Saint George’s School (IBE ST. GEORGE’S), T‑438/22, not published, EU:T:2023:349, paragraph 77). 82 It must be stated that the applicant has done no more than to refer, in the application, to certain EU trade marks and to produce, in Annex 6, a list of registered marks containing the element ‘tron’. That evidence merely reflects the fact of registration and does not provide any indication of the actual use of those marks on the market or of how the relevant public would have come into contact with them. Furthermore, the marks cited by the applicant before the Court are not identical to those at issue in the present case. Accordingly, that evidence is insufficient to demonstrate that the distinctive character of the earlier marks has been weakened by their coexistence with other marks containing the term ‘tron’, or that such coexistence has reduced the likelihood of confusion between the marks at issue. 83 Thus, the Board of Appeal did not make an error of assessment in finding that there was a likelihood of confusion between the marks at issue. 84 It follows that the applicant’s single plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be rejected, and consequently that the action must be dismissed in its entirety. Costs 85 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 86 Since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, it is appropriate, given that no hearing was in fact convened, to order each party to bear its own costs. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders each party to bear its own costs. Škvařilová-Pelzl Nõmm Kukovec Delivered in open court in Luxembourg on 28 January 2026. V. Di Bucci S. Papasavvas Registrar President * Language of the case: English.