Assessing risks of confusion in low distinctive trademarks: the BIOTROP vs. BIOTRON Case

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In a breakthrough decision, the EUIPO’s Board of Appeal recently addressed the complex landscape of trademark protection, setting a precedent with its ruling on the opposition between “BIOTROP” and “BIOTRON.” This case has sparked significant discussion among intellectual property professionals, especially regarding trademarks with low distinctiveness in the health and technical sectors.


Background of the Case

On October 15, 2021, BIOTROP PARTICIPAÇÕES S.A. (BIOTROP) applied for trademark registration covering a range of chemicals and services across classes 1, 5 and 35, including fungicides, insecticides, fertilizers, and associated retail services. CIFO S.r.l., a competing entity, challenged this trademark application, arguing it could be confused with their existing EU and Italian trademarks ‘BIOTRON’.

Initially, the EUIPO’s Opposition Division ruled in favor of CIFO S.r.l., acknowledging the potential for confusion regarding goods in classes 1 and 5, and for most services in class 35. Unconvinced, BIOTROP appealed to the EUIPO’s Board of Appeal (BoA).


Unravelling the Board of Appeal’s Verdict: distinguishing factors in “BIOTROP vs. BIOTRON”

The Board’s decision (R1656/2023-2) to deny confusion between the two trademarks, despite their apparent similarity and the related nature of their goods and services, underscores the nuanced approach required in evaluating trademarks.

The Board based its decision on several factors, including the average similarity in goods due to their purpose, sales channels, and market competition, while only a low level of similarity was noted between the services in class 35 and the goods in class 1.

The Board also discussed the distinctiveness of the trademarks, noting that the common prefix ‘bio’ was non-distinctive for biological or organic products. However, the suffixes ‘tron’ and ‘trop’ were deemed distinctive due to their lack of meaning.

Furthermore, the Board assessed the visual, phonetic, and conceptual similarities between the two marks. Despite the first six letters being identical, the distinctive suffixes and the inclusion of a figurative element in BIOTROP’s application were enough to create a different overall impression, particularly to a discerning audience.

This decision suggests a potential narrowing in the scope of trademark protection, focusing it on cases of nearly identical reproductions and highlighting the importance of distinctiveness.

New uncertainties: a decision creating legal risks for prior trademarks owners


The apparent minimal visual and phonetic resemblance between the trademarks raises doubts. With six out of seven letters shared, arranged identically from the start, it is challenging to dismiss the potential for confusion. Citing the alphabet’s finite nature, the ‘BIO’ prefix’s descriptive quality, and the contested mark’s simplistic design hardly negates the risk of confusion. One might wonder, how closely must trademarks resemble one another before they are deemed to have a moderate to high level of similarity? Under such scrutiny, it appears that the protection afforded by the prior trademark is nearly restricted to cases where a new trademark replicates it entirely, without any distinguishing features.

For trademark owners, this decision is a source of legal uncertainty. An important similarity between the signs and the goods and services no longer seems sufficient to create a likelihood of confusion, if a relatively insignificant part of the trademark is deemed distinctive.

The decision encourages new right holders to ensure that their trade mark applications highlight unique, distinctive elements in order to satisfy the EUIPO’s requirements and secure the trademark’s future.


By examining cases such as “BIOTROP vs. BIOTRON”, we gain valuable insights into the EUIPO’s current perspective on trademark protection. In navigating these complex waters, Dreyfus Lawfirm, stands ready to offer its expertise and support in protecting your intellectual property rights.


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