Specifying the list of goods and services

Nowadays, a list of goods and services is considered to only include the goods and services covered by the literal meaning of the terms used in the list. However, old registrations include lists of goods and services where the goods and services are set out in a very vague manner, in compliance with the practice used when the trademark application was filed. The class definition might contain an entire class heading, for example, or the list might only contain a class number or the phrase “all goods in this class”. This makes it difficult to determine what the trademark’s scope of protection actually covers.

What is the purpose of the specification process?

The purpose of the specification process is to provide trademark owners with the opportunity to specify their lists so that they will meet the new classification regulations.

The specification process aims to harmonise how lists of goods and services are interpreted and clarify the evaluation of the scope of protection given to trademarks. Currently, the lists for trademarks that have been applied for at different times are interpreted in different ways. An old list of goods can actually cover something that could in no way be deduced when reading through the terms set out in the list.

Example 1

A trademark has been applied for on 5 June 2012, and its list of goods and services contains the class heading for class 35: “advertising; business management; business administration; office functions”. Since the mark was applied for before 1 October 2012 with the entire class heading, the mark is considered to also cover the retail trade of goods.

After the deadline for specifying the list has expired, every list of goods and services will be interpreted in the same manner, i.e. the list will be considered to only cover the goods and services included in the literal meaning of the list.

Example 2

If the example/trademark presented above is not further specified before the deadline, it will no longer be considered to cover retail trade services, since retail trade services are not included in the literal meaning of any of the terms used in the class heading (advertising; business management; business administration; office functions).