Much harder than it looks! Drafting lists of goods and services

Before drafting the list of goods and services the following should be considered:

1. The Nice Classification

The Nice Classification is a system that allows all possible products to be classified in 45 classes. Each class is defined by a class heading, which is a summary for many – but not necessarily all – goods or services attributable to this class, and an alphabetical list containing pre-approved terms. It also provides guidance on how to classify products that are not pre-approved in its General Remarks and Explanatory Notes.

2. The Harmonised Database and TMclass

Within the structure created by the Nice Classification, the Harmonised Database was created. It contains more than 78,000 goods and services that are pre-approved by the European Union Intellectual Property Office (EUIPO) as well as all national IP Offices in the European Union (EU).

Via the TMclass portal (https://euipo.europa.eu/ec2/?lang=en) the Harmonised Database can be searched in all official languages of the EU as well as classification databases of international participating offices from Angola to India to the USA. In addition, the Madrid Goods & Service Manager of the WIPO (for International Registrations) can be accessed.

3. Territory

Almost every IP Office has its own classification database. Hence, it is relevant to know which territory a list of goods and services will be drafted for.

• For the EU or an EU Member State only: It is possible to work with the terms of the Harmonised Database. In Austria, for example, using only such terms means the Fast Track procedure can be used (see part 3 of our blog).
• If trademark protection is sought also for territories outside the EU, drafting the specification could become very complex, as the pre-approved terms of a variety of IP Offices need to be combined to avoid or at least limit expensive office actions based on the wording of the list of goods and services.

4. Is it possible to rely only on pre-approved terms?

Yes, if the mark is intended only to be used for a limited number of rather common goods and/or services and to be protected in just a few territories.

No, if

• the brand is planned to be rolled out in a variety of countries; this frequently already starts with a combination of EU and non-EU countries and gets more complicated if protection on several continents is required;
• the product is tech-driven or newly developed, in which case oftentimes no adequate generic name exists yet.

5. Anything else to think about?

Definitely. If the specification:

• is very broad, it invites conflicts that could have been avoided and is more expensive, as in most countries additional fees at the time of application and of renewal must be paid for each class;
• is very narrow, the trademark might not be sufficiently protected for relevant products, and additional applications may be required in case of rather minor product range extensions;
• is (technically) too specific, it might be rejected, as the public cannot understand for what products the mark is supposed to be protected;
• only includes general terms or contains an extensive list of very specific terms, problems are to be expected if use of the mark for the registered goods/services needs to be proven.

Additionally, in its decision T-794/21, MOULDPRO, the General Court of the European Union recently stated that it is the applicant's responsibility to ensure that the specification indeed protects the products that the applicant wanted to protect, even if the IP Office offered suggestions as to the classification and wording of the terms.

When preparing a trademark application, it is important to pay close attention to the wording of the list of goods and services. Only strategically worded specifications provide the best possible protection for your brands.

authors: Gudrun Irsa-Klingspiegl, Michael Woller