JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
24 September 2025 (*)
( EU trade mark – Opposition proceedings – Application for EU word mark Confrasilvas – Earlier sign Confrasilvas – Relative ground for refusal – Use in the course of trade of a sign of more than mere local significance – Article 8(4) of Regulation (EU) 2017/1001 )
In Case T‑557/24,
Confrasilvas – Construções, S. A., established in Lisbon (Portugal), represented by J. Oliveira, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Riccardo Zizioli, residing in Brescia (Italy),
THE GENERAL COURT (Seventh Chamber),
composed, at the time of the deliberations, of K. Kowalik-Bańczyk, President, E. Buttigieg and B. Ricziová (Rapporteur), 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, Confrasilvas – Construções, S. A., seeks the annulment and alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 August 2024 (Case R 35/2024-2) (‘the contested decision’).
Background to the dispute
2        On 15 June 2022, Mr Riccardo Zizioli filed with EUIPO an application for registration of an EU trade mark in respect of the word sign Confrasilvas, which covered various services in Class 37 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; those services were connected with, in particular, construction, installation, maintenance, repair and extraction.
3        On 31 August 2022, the applicant and Grupo Confrasilvas, SGPS, S. A. filed a notice of opposition to registration of the mark applied for in respect of all the services covered by that application for registration.
4        The opposition was based on the following earlier rights:
–        the Portuguese company names Confrasilvas – Construções, S. A. and Grupo Confrasilvas, SGPS, S. A.;
–        the trade name Confrasilvas used in the course of trade in Germany, Spain, France, Hungary, Portugal and Romania for business activities relating to, inter alia, the construction, sale and management of real estate.
5        The ground relied on in support of the opposition was that set out in Article 8(4) 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).
6        On 12 December 2022, in response to a question from EUIPO, the applicant informed EUIPO that the opposition was being pursued by the applicant alone and solely on the basis of the sign Confrasilvas used in the course of trade.
7        On 31 December 2023, the Opposition Division rejected the opposition.
8        On 5 January 2024, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.
9        By the contested decision, the Board of Appeal dismissed the appeal on the ground that the cumulative conditions laid down in Article 8(4) of Regulation 2017/1001 were not satisfied. It found that the evidence in the file had not shown that the applicant had used the earlier sign in the course of trade of more than mere local significance.
Forms of order sought
10      The applicant claims, in essence, that the Court should:
–        annul the contested decision;
–        uphold the opposition to the application for registration of the mark applied for;
–        order EUIPO and the other party to the proceedings before the Board of Appeal to pay the costs, including those relating to the proceedings before the Board of Appeal.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
Law
Admissibility of the evidence adduced for the first time before the General Court
12      EUIPO contends that Annexes A.8 to A.26 to the application are inadmissible, as that evidence is being adduced for the first time before the Court.
13      The applicant claims that it is entitled to adduce evidence for the first time before the Court if that evidence is necessary in order to rebut arguments put forward for the first time in the contested decision. It considers that, in the present case, it is essential to submit new evidence in order to supplement the evidence already adduced before the Opposition Division and the Board of Appeal and to challenge the points raised by the Board of Appeal in the contested decision.
14      In that regard, it should be borne in mind that the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. Pursuant to Article 95 of Regulation 2017/1001, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
15      Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not change the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
16      Consequently, even if, as the applicant claims, the evidence relied on for the first time before the Court strengthens, clarifies or supplements that relied on before EUIPO, that evidence cannot be regarded as admissible (see, to that effect, judgment of 16 October 2024, Medspa v EUIPO – Hic (ALDO COPPOLA AMO), T‑508/23, not published, EU:T:2024:700, paragraph 39).
17      In addition, it should be noted that the applicant does not indicate which arguments were raised for the first time in the contested decision that would constitute grounds for its being, according to the judgment of 11 April 2019, Adapta Color v EUIPO – Coatings Foreign IP (ADAPTA POWDER COATINGS), (T‑223/17, not published, EU:T:2019:245, paragraphs 17 and 20 to 23), entitled to adduce new evidence before the Court in order to challenge those arguments.
18      In the light of the foregoing, Annexes A.8 to A.26 to the application must be declared inadmissible. Consequently, the applicant’s arguments will be examined below only in so far as they are not based on inadmissible evidence.
Substance
19      In support of its action, the applicant relies, in essence, on a single plea in law alleging infringement of Article 8(4) of Regulation 2017/1001.
20      As a preliminary point, it should be noted that, under Article 8(4) of Regulation 2017/1001, read in conjunction with Article 46(1)(c) of that regulation, the proprietor of a non-registered trade mark or of a sign other than a trade mark may oppose the registration of an EU trade mark if that non-registered trade mark or sign satisfies four cumulative conditions: (i) it must be used in the course of trade; (ii) it must be of more than mere local significance; (iii) the right to that mark or sign must have been acquired in accordance with the law of the Member State in which the mark or sign was used prior to the date of application for registration of the EU trade mark; and (iv) that mark or sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those conditions are cumulative; thus, where a non-registered trade mark or a sign does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) of Regulation 2017/1001 cannot succeed (see judgment of 28 June 2023, Hofmeir Magnetics v EUIPO – Healthfactories (Hofmag), T‑452/22, not published, EU:T:2023:362, paragraph 26 and the case-law cited).
21      While the first two conditions must be interpreted in the light of EU law, the last two are to be assessed in the light of the law governing the sign concerned (see judgment of 1 September 2021, Sony Interactive Entertainment Europe v EUIPO – Wong (GT RACING), T‑463/20, not published, EU:T:2021:530, paragraph 37 and the case-law cited).
22      In support of its single plea, the applicant puts forward, in essence, two complaints. First, the Board of Appeal erred in its assessment of the evidence submitted by the applicant concerning the use of the earlier sign in the course of trade of more than mere local significance. Second, the Board of Appeal failed to examine the valid grounds for rejecting the mark applied for based on Portuguese national law conferring on the applicant the right to prohibit the use of that mark.
23      EUIPO disputes the applicant’s arguments.
24      In the present case, in paragraphs 27 to 35 of the contested decision, the Board of Appeal found that the evidence provided by the applicant did not show that the applicant had used the earlier sign in the course of trade of more than mere local significance.
25      In that regard, first, the Board of Appeal noted that, although Annex 4 submitted during the opposition proceedings included copies of the annual reports of Grupo Confrasilvas, SGPS, S. A. for the period from 2016 to 2020, the information contained in those reports was not broken down by undertaking, country or region, with the result that those reports did not contain any information on the revenue generated by the applicant and did not indicate in which country or in relation to which activity that revenue was generated. Second, the Board of Appeal stated that Annex III to the statement setting out the grounds of the appeal before it included pictures of construction sites in, inter alia, Spain, Portugal and France, related to ‘Grupo Confrasilvas’ and that those pictures, apart from the reference to the copyright notice and impression years, namely 2023 and 2024, were undated. Third, it stated that Annex 15, submitted during the opposition proceedings, provided a presentation by Grupo Confrasilvas, SGPS, S. A. and the revenues from Confrasilvas – Cofragens S. A. from 1993 to 2009, that is to say, more than 10 years before the relevant date, namely 15 June 2022. That annex also included photographs of construction sites dating from 1997 to 2009. Fourth, the Board of Appeal emphasised that the evidence submitted by the applicant did not include any contract concluded by the applicant with a third party relating to construction works and services.
26      In addition, it is apparent from paragraphs 35 to 39 of the contested decision that the Board of Appeal concluded, solely on the basis of the assessment summarised in paragraph 25 above, that the cumulative conditions laid down in Article 8(4) of Regulation 2017/1001 were not satisfied in the case at hand. Consequently, it dismissed the applicant’s appeal.
27      As regards the applicant’s first complaint, alleging an error in the assessment of the use of the earlier sign in the course of trade of more than mere local significance, the applicant claims, first, that the Board of Appeal failed to take into consideration the existence of the applicant’s group business relationship with Grupo Confrasilvas, SGPS, S. A.
28      In that regard, it should be borne in mind that, under Article 46(1)(c) of Regulation 2017/1001, notice of opposition to the registration of an EU trade mark may be given, on the basis of Article 8(4) of Regulation 2017/1001, only by the proprietors of earlier trade marks or signs referred to in Article 8(4) and by persons authorised under the applicable national law to exercise the rights in question.
29      It should also be borne in mind that the applicant indicated to EUIPO during the opposition proceedings that it was continuing those proceedings solely on its own behalf, and therefore not jointly with Grupo Confrasilvas, SGPS, S. A., and that it had been the ‘holder of the trade name Confrasilvas since 1993’.
30      The applicant cannot therefore criticise the Board of Appeal for having concluded that the evidence which the applicant submitted during the proceedings before EUIPO, and in particular Annexes 4 and III, which related to Grupo Confrasilvas, SGPS, S. A. and the Confrasilvas group and did not provide any information about the applicant and its activities, did not show use of the earlier sign by the applicant in the course of trade.
31      Therefore, the applicant’s arguments based generally on the obligation to take account of an existing group business relationship must be rejected, as must the arguments concerning the probative value of Annexes 4 and III.
32      Second, the applicant claims that the Board of Appeal did not take into account all the evidence adduced before EUIPO, given that, in its assessment, in the contested decision, of the use of the earlier sign, the Board of Appeal took into account only three of the annexes submitted.
33      However, it must be observed that, contrary to the applicant’s assertions, the Board of Appeal took account of all the evidence put forward by the applicant before it and before the Opposition Division. As is noted by EUIPO, it is apparent from paragraphs 6 and 7 of the contested decision that, in the summary of the facts, the Board of Appeal described all the evidence put forward before the Opposition Division, as well as the reasons why the Opposition Division found that evidence to be insufficient. In paragraphs 10 and 14 of that decision, reference is also made to the evidence in the summary of the applicant’s submissions and arguments, as well as in the summary of the evidence adduced for the first time before the Board of Appeal. It is also apparent from paragraph 15 of the contested decision that the Board of Appeal took into account the evidence put forward before the Opposition Division in order to ascertain that the evidence adduced for the first time before the Board of Appeal supplemented that evidence and, consequently, was admissible. In addition, in order to be able to assess, in paragraphs 29 to 31 of the contested decision, the content of the annual reports of Grupo Confrasilvas, SGPS, S. A. for the period from 2016 to 2020, the Board of Appeal necessarily had to take into account not only Annex 4, submitted during the opposition proceedings, referred to in paragraph 29 of the contested decision and containing only the annual report for 2016, but also at least Annexes 5 to 8, submitted during the opposition proceedings and containing the annual reports for the years 2018 to 2020. Lastly, it is also apparent from paragraph 34 of the contested decision that the Board of Appeal necessarily examined all the evidence submitted by the applicant in order to be able to state that that evidence did not include any contract concluded by the applicant with a third party relating to construction works and services.
34      Third, the applicant submits that the evidence, analysed in its entirety, shows use of the earlier sign in the course of trade of more than mere local significance.
35      In that regard, it should be borne in mind that, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, which is applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 thereof, and under Article 177(1)(d) of the Rules of Procedure, an application must contain, inter alia, the subject matter of the dispute, the pleas in law and arguments relied on and a summary of those pleas in law. It is settled case-law that, although specific points in the text of the application can be supported and completed by references to specific passages in the documents annexed thereto, a general reference to other documents cannot compensate for a failure to set out the essential elements of the legal argument, which must, under the provisions recalled above, appear in the application itself (see judgment of 8 July 2020, Scorify v EUIPO – Scor (SCORIFY), T‑328/19, not published, EU:T:2020:311, paragraph 20 and the case-law cited).
36      In order to guarantee legal certainty and the sound administration of justice, the summary of the applicant’s pleas in law must be sufficiently clear and precise to enable the defendant to prepare its defence and the competent Court to rule on the action. Thus, it is not for the General Court to seek and identify, in the annexes, or even in EUIPO’s administrative file, the pleas on which it may consider the action to be based. Similar requirements are called for where a submission is made in support of a plea in law (judgment of 9 March 2018, Recordati Orphan Drugs v EUIPO – Laboratorios Normon (NORMOSANG), T‑103/17, not published, EU:T:2018:126, paragraph 24 and the case-law cited).
37      Nor is it for the General Court to take on the role of the parties by seeking to identify the relevant pleas and arguments in the documents to which those parties refer (judgment of 17 April 2008, Dainichiseika Colour & Chemicals Mfg. v OHIM – Pelikan (Representation of a pelican), T‑389/03, not published, EU:T:2008:114, paragraph 19).
38      It must be pointed out that, in order to call into question the Board of Appeal’s assessment of the evidence in the contested decision, the applicant confines itself in the application, first, to making a general reference to the evidence adduced in the context of the administrative proceedings, without indicating how the specific assessment of that evidence could invalidate the Board of Appeal’s conclusion in paragraph 35 of the contested decision that use of the earlier sign in the course of trade of more than mere local significance had not been shown. Second, although the applicant refers in the application to Annex 4 submitted during the opposition proceedings and to Annex III to the statement setting out the grounds of the appeal before the Board of Appeal, it must be stated, as is apparent from paragraphs 30 and 31 above, that those arguments, in so far as they are based on those annexes, must be rejected given that those documents do not give any indication of the applicant’s use of the earlier sign in the course of trade. In addition, it must be held that the applicant does not dispute the limited probative value of the undated photographs submitted in Annex III to the statement setting out the grounds of the appeal before the Board of Appeal, as it states in the application that such documents may be used to corroborate other evidence.
39      Consequently, the applicant’s arguments are not such as to call into question the Board of Appeal’s conclusion that the applicant did not show that it had used the earlier sign in the course of trade of more than mere local significance.
40      Therefore, the first complaint of the single plea must be rejected.
41      As regards the second complaint of the single plea, alleging failure to examine the valid grounds for rejecting the mark applied for in the light of Portuguese national law, it must be borne in mind that, (i) according to the case-law cited in paragraph 20 above, the four conditions laid down in Article 8(4) of Regulation 2017/1001 are cumulative and (ii) the Board of Appeal correctly concluded in the contested decision that the applicant had not shown that it had used the earlier sign in the course of trade of more than mere local significance. Accordingly, the Board of Appeal was not required to decide on the question of whether, under Portuguese law, the applicant was entitled to prohibit the use and thus to oppose the registration of the mark applied for (see, to that effect, judgment of 6 April 2022, Dorit-DFT v EUIPO – Erwin Suter (DORIT), T‑208/21, not published, EU:T:2022:228, paragraph 75 and the case-law cited).
42      Therefore, the second complaint of the single plea, according to which the Board of Appeal failed to take into consideration and examine the valid grounds for rejecting the mark applied for based on Portuguese national law conferring on the applicant the right to prohibit the use of that mark, must be rejected as ineffective.
43      In the light of the foregoing, the single plea in law put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
44      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.
45      In the light of the foregoing, it must be held that, (i) since the applicant has been unsuccessful, it must be ordered to bear its own costs, and (ii) since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, in the absence of such a hearing, EUIPO must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Confrasilvas – Construções S. A. and the European Union Intellectual Property Office (EUIPO) to bear their own costs.
Kowalik-Bańczyk
Buttigieg
Ricziová
Delivered in open court in Luxembourg on 24 September 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.