Motivation of refusal by national offices
3 preliminary rulingsOrder of 12 Feb 2009, C-39/08 (Bild digital) 
The competent authority of a Member State called upon to rule on an application for registration of a trade mark is not required to disregard the grounds for refusal of registration set out in Article 3(1)(a), (b) and (c) of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, as amended by Council Decision 92/10/EEC of 19 December 1991, and to grant that application on the ground that the sign for which registration as a trade mark is sought is composed in a manner identical or comparable to a sign which it has already accepted for registration as a trade mark and which refers to identical or similar goods or services.
Judgment of 15 Feb 2007, C-239/05 (Management, Training en Consultancy (The Kitchen Company))
First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that: – when refusing registration of a trade mark, the competent authority is required to state in its decision its conclusion for each of the individual goods and services specified in the application for registration, regardless of the manner in which that application was formulated. However, where the same ground of refusal is given for a category or group of goods or services, the competent authority may use only general reasoning for all of the goods or services concerned; – it does not preclude national legislation which prevents the court reviewing the decision of the competent authority from ruling on the distinctive character of the mark separately for each of the individual goods and services specified in the trade mark application, where neither that decision nor that application related to categories of goods or services or goods or services considered separately; – it does not preclude national legislation which prevents the court reviewing a decision of the competent authority from taking account of facts and circumstances which arose after that decision had been taken.
Judgment of 12 Feb 2004, C-363/99 (KPN (postkantoor))
The fact that a trade mark has been registered in a Member State in respect of certain goods or services has no bearing on the examination by the trade mark registration authority of another Member State of an application for registration of a similar mark in respect of goods or services similar to those in respect of which the first mark was registered.
Directive 89/104 prevents a trade mark registration authority from registering a mark for certain goods or services on condition that they do not possess a particular characteristic.
The practice of a trade mark registration authority which concentrates solely on refusing to register manifestly inadmissible marks is incompatible with Article 3 of Directive 89/104.
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