Opinion of the Advocate General — ECLI:EU:C:2006:450
Date: 2006-07-06
Language of the case: Dutch
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Belgium

Summary of the Judgment 1. Approximation of laws – Trade marks – Directive 89/104 – Registration of a new trade mark – Examination of the sign by the competent authority (Council Directive 89/104, Art. 3) 2. Approximation of laws – Trade marks – Directive 89/104 – Registration of a new trade mark – Examination of the sign by the competent authority (Council Directive 89/104, Art. 3) 3. Approximation of laws – Trade marks – Directive 89/104 – Registration of a new trade mark – Examination of the sign by the competent authority (Council Directive 89/104, Art. 3) 1. First Directive 89/104 on trade marks must be interpreted as meaning that where registration of a mark is sought in respect of various goods or services, an examination of the grounds for refusal listed in Article 3 of the directive must be carried out in relation to each of the goods and services for which trade mark registration is sought. It follows that, when refusing registration of a trade mark applied for in respect of a series of goods and services, 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, and that the decision of the competent authority refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods or services. 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. (see paras 34-35, 37-38, operative part) 2. Given the freedom which First Directive 89/104 on trade marks gives to the Member States in fixing the procedural provisions concerning, inter alia, the registration of trade marks, that directive must be interpreted as not precluding 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. Such a limitation on the court’s powers cannot be regarded as likely to make it practically impossible or excessively difficult to exercise the rights conferred by the directive, since the party concerned, following a decision that is wholly or partially unfavourable to him, may make a fresh application for registration of the mark. It is for the referring court, however, to determine whether the principles of equivalence and effectiveness have been observed. (see paras 44-46, 48, operative part) 3. First Directive 89/104 on trade marks must be interpreted as not precluding 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. In such a situation, the national courts must rule on the lawfulness of a given decision of the competent authority, which could have been taken only on the basis of the facts and circumstances of which it was possible for that authority to be aware at the time when it reached that decision. (see paras 59, 61, operative part)