What should I specify in the list?

The details you should specify in your list depend most importantly on the goods and services that your mark is actually used for. The crucial question is whether the goods and services are already included in the literal meaning of the list, i.e. whether they can be interpreted as belonging under or within a term presented in the list.

The examples below explain this in practice.

The list of goods and services does not contain any terms, i.e. it consists only of a class number or a reference such as “all goods”

• In this case, you should specify the list with the goods and services that the mark is actually used for and that were included in the class in question when you applied for the trademark.

The list of goods and services contains an entire class heading, and the trademark application was filed before 1 October 2012

• In this case, you should specify the list with the goods and services that belong to the class in question and that the mark is actually used for, and that are not already covered by the literal meaning of the list.

Example 1:

The list of goods contains the heading for class 25: “clothing, footwear, headgear”.

The company that owns the mark only manufactures sandals. A company that manufactures sandals does not necessarily need to submit any further specifications, as sandals are already included in the literal meaning of the list. It should be fairly obvious that sandals are footwear.

Example 2:

The list of services for a trademark contains the class heading for class 35: “advertising; business management; business administration; office functions”.

The company that owns the trademark sells clothing. Retail trade is not included in the literal meaning of the heading for class 35. Retail trade cannot be considered as advertising, business management or business administration.

A company that sells clothes should supplement the list in the following manner, for example: “advertising; business management; business administration; office functions; retail sale of clothing”.

The list of goods and services contains the text: “all other goods that are included in this class in the alphabetical list of the Nice Classification”.

• In this case, you should specify the list with the goods and services set out in the Nice Alphabetical List that the mark is actually used for and that are not already included in the literal meaning of the terms in the list.

Example:

A trademark includes the class heading for class 15: “musical instruments”. According to the alphabetical list, this class also includes music stands. This means the mark’s scope of protection has also covered music stands. If the mark has been used for music stands, you should specify the list accordingly.

In future, the term “musical instruments" will be interpreted in the literal meaning and will not be considered to cover music stands.