JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
28 January 2026 (*)
( EU trade mark – Opposition proceedings – Application for EU word mark TELOTRÓN – Earlier EU and national marks TRON – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑203/25,
Montepelayo, SLU, established in Pozuelo de Alarcón (Spain), represented by I. González-Mogena González, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Lobotková and R. Raponi, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
TRON – Translationale Onkologie an der Universitätsmedizin der Johannes Gutenberg-Universität Mainz gemeinnützige GmbH,
established in Mainz (Germany),
THE GENERAL COURT (Sixth Chamber),
composed of P. Škvařilová-Pelzl, President, I. Nõmm (Rapporteur) and D. Kukovec, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the 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 Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Montepelayo, SLU, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 January 2025 (Case R 1020/2024-1) (‘the contested decision’).
Background to the dispute
2        On 26 January 2023, the applicant filed an application for registration of an EU trade mark with EUIPO for the word sign TELOTRÓN.
3        The mark applied for covered goods and services in Classes 5, 9 and 44 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponds, for each of those classes, to the following description:
–        Class 5: ‘Medical preparations; diagnostic preparations for medical purposes; pharmaceutical compositions; pharmaceuticals’;
–        Class 9: ‘Software’;
–        Class 44: ‘Medical services; advisory services relating to medical apparatus and instruments; consultancy and information services relating to medical products; advisory services relating to medical services; consultancy and information services relating to pharmaceutical products’.
4        On 2 March 2023, the other party to the proceedings before the Board of Appeal, TRON – Translationale Onkologie an der Universitätsmedizin der Johannes Gutenberg-Universität Mainz gemeinnützige GmbH, filed a notice of opposition to the registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5        The opposition was based on the following earlier marks:
–        the EU word mark TRON, filed on 20 September 2019 and registered on 8 February 2020 under No 18126261, covering, inter alia, services in Classes 42 and 44 and corresponding, for each of those classes, to the following description:
–        Class 42: ‘Science and technology services; research and development; chemical and molecular biology laboratory services’,
–        Class 44: ‘Medical and veterinary medical services; pharmaceutical and medical advisory services’;
–        the German word mark TRON, filed on 1 October 2020 and registered on 15 October 2020 under No 302020021406, covering goods in Class 9 and corresponding to the following description: ‘Software for medical and biotechnological applications, in particular in the fields of diagnostic and therapy; bioinformatic-software’.
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7        On 18 April 2024, the Opposition Division rejected the opposition in its entirety on the ground that there was no likelihood of confusion.
8        On 15 May 2024, the other party to the proceedings before the Board of Appeal filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9        By the contested decision, the Board of Appeal upheld the appeal and annulled the decision of the Opposition Division.
10      In the first place, with regard to the earlier EU trade mark, the Board of Appeal, first, defined the relevant public as being composed of English-speaking consumers in the European Union, both the general public and specialists in the medical and biotechnological fields, who were considered to have a high level of attention as regards goods and services in Classes 5 and 44, and an average level of attention as regards goods in Class 9. Secondly, the Board of Appeal held that the services in Class 5 covered by the mark applied for were similar, to an average degree, to the services in Classes 42 and 44 covered by the earlier marks. It also held that the services at issue in Class 44 were identical, and that the goods in Class 9 covered by the mark applied for were not similar to the services in Classes 42 and 44 designated by that earlier mark. Thirdly, with regard to the comparison of the signs, the Board of Appeal held that the relevant public would perceive the sign comprising the mark applied for as a combination of two distinctive elements, ‘telo’ and ‘trón’, which had equal weight in the overall impression of the mark applied for. It thus concluded that, visually and phonetically, the signs at issue were similar to an average degree and that, conceptually, in so far as the signs at issue coincided in the element ‘tron’, they were similar. Fourthly, and consequently, the Board of Appeal held, on the one hand, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 as regards the contested goods and services in Classes 5 and 44 whereas, on the other hand, there was no likelihood of confusion as regards the contested goods in Class 9.
11      In the second place, since the goods in Class 9 covered by the mark applied for were not similar to the services in Classes 42 and 44 covered by the earlier EU trade mark, the Board of Appeal examined the opposition concerning those goods in so far as it was based on the earlier German trade mark, in relation to which it defined the relevant public as specialists in the healthcare sector interested in diagnosis and therapy software in Germany, who were considered to have an average level of attention. It determined that those goods were identical to the goods in the same class covered by the German trade mark. Next, with regard to the comparison of the signs at issue, it followed the same reasoning as for the earlier EU trade mark, with the caveat that the element ‘tron’ had no meaning in German, so that, for the part of the public that perceived it as fanciful, a conceptual comparison was not possible. Lastly, the Board of Appeal concluded that, in relation to those goods, there was a likelihood of confusion between the mark applied for and the earlier German mark.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and, if applicable, the other party to the proceedings to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs in the event that a hearing is convened.
Law
Substance
14      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
15      The applicant submits that the Board of Appeal was wrong to find that there was a likelihood of confusion between the signs at issue. First, it challenges the assessment made by the Board of Appeal with regard to the comparison of the goods and services at issue. Secondly, it submits that the Board of Appeal made an error of assessment in finding that the relevant public would break down the mark applied for into two elements. That led to an error in the assessment of the degree of similarity between the signs at issue and an incorrect evaluation of the relevant factors in the overall assessment of the likelihood of confusion. Furthermore, the applicant submits that a likelihood of confusion is also disproved by the fact that a large number of marks containing the term ‘tron’ are already registered, which shows that they coexist peacefully.
16      EUIPO disputes the applicant’s arguments.
17      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, 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.
18      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. 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 OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 32 and the case-law cited).
19      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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 OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
20      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or 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 Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (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).
21      It should also be recalled that it is not necessary to find that that likelihood of confusion exists for the whole of the relevant public. A finding that there is a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition brought against an application for registration of a mark (see judgment of 20 November 2017, Stada Arzneimittel v EUIPO – Urgo recherche innovation et développement (Immunostad), T‑403/16, not published, EU:T:2017:824, paragraphs 49 and 50 and the case-law cited).
22      In the present case, given that the Board of Appeal upheld the appeal on the basis of the earlier EU trade mark in respect of the goods and services in Classes 5 and 44 covered by the trade mark applied for, and on the basis of the earlier German trade mark in respect of the goods in Class 9 covered by the trade mark applied for, it is necessary to determine whether it assessed all the relevant factors correctly and whether its conclusion as to the existence of a likelihood of confusion is well founded, taking into account, in particular, their respective territories of protection and relevant publics.
Relevant publics
23      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 OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
24      The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (see judgment of 24 May 2011, ancotel v OHIM – Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 38 and the case-law cited).
25      In the present case, first, as regards the earlier EU trade mark, the Board of Appeal found, in paragraph 17 of the contested decision, that the relevant territory for the purposes of assessing the likelihood of confusion was the European Union as a whole and, in accordance with the case-law referred to in paragraph 20 above, based its examination on the perception of the English-speaking part of that public. It also held, in paragraph 18 of that decision, that, given the nature of the goods and services at issue, the relevant public consisted, on the one hand, essentially, of the specialist public in the fields, amongst others, of medicine and biotechnology, and, on the other hand, of the general public. For the goods and services in Classes 5 and 44, that public paid a high level of attention, whereas for the goods in Class 9, the level of attention was average.
26      Secondly, with regard to the earlier German trade mark, the Board of Appeal found, in paragraphs 50 and 51 of the contested decision, that the relevant territory was Germany and that the relevant public consisted, in essence, of the specialist public in the medical field interested in software, with an average level of attention.
27      Those findings of the Board of Appeal, which, moreover, are not disputed by the applicant, must be upheld.
28      Since the specialist public cannot be regarded as a negligible part of the relevant public, the Court considers that, in the circumstances of the present case, it is sufficient, under the case-law cited in paragraph 21 above, to have regard to the perception of that public, and that there is no need to consider whether there is a likelihood of confusion in the mind of the general public.
Comparison of the goods and services at issue
29      In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
30      The Board of Appeal observed, in paragraphs 21 to 23 of the contested decision, that the goods in Class 5 covered by the mark applied for, namely, in essence, pharmaceutical products and diagnostic preparations for medical purposes, were similar to an average degree to both the research and development services in Class 42 designated by the earlier EU mark and the medical and veterinary services in Class 44 designated by that same mark. It then held that the services in Class 44 covered by the mark applied for were identical to the services in the same class covered by that earlier mark. Lastly, with regard to the goods in Class 9 covered by the mark applied for, consisting of ‘software’, the Board of Appeal held, in paragraph 52 of the contested decision, that they were identical to the goods in that class designated by the earlier German mark, namely ‘software for medical and biotechnological applications, in particular in the fields of diagnostic and therapy; bioinformatic-software’.
31      It must be observed that the applicant’s argument is limited to stating that it rejects ‘the conclusion reached in the [contested decision] regarding the relationship between the goods and services of the competing trademarks’, without putting forward any specific arguments in that regard.
32      By virtue of the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to proceedings before the General Court pursuant to the first paragraph of Article 53 of that statute, and of Article 177(1)(d) of the Rules of Procedure of the General Court, an application must state, inter alia, the subject matter of the proceedings and a 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.