The trademark is registered for certain goods and/or services, and the scope of the legal protection granted to the trade mark owner is determined by the goods and services covered by the application. As a result, it's critical that the list's content caters to the applicant's requirements.
We recommend that you take the time to prepare the list. Make sure its content is relevant to your needs, and that the format is such that no time is wasted later communicating with the office. The effort spent up front pays off later in terms of time and money won, as well as better-planned strategy!
To make the list-making process easier, goods and services are divided into 45 classes (classes 1 to 34 are for goods and classes 35 to 45 are for services) according to an international system called the Nice Classification.
When making the list, keep in mind
- Think carefully about the goods and services for which you want protection for. Are these goods, services or both? Are the activities you do directed at third parties, is it a service or just an in-house activity? The trade mark will receive legal protection for 10 years (and its legal protection can be extended every 10 years to indefinitely). Maybe it is worth to include goods or services that are not yet produced/provided, but there’s a possibility in the future?
Would it be worthwhile to protect the trade mark a little more widely, even if there is no desire to expand? Consider which identical or very similar registered trade marks in relation to your goods or services would be actually harmful to your business. Therefore, would it make sense to register your trade mark for goods and services close to your goods and services and thus keep the „air clean“, or would it make sense to spend money only if there is a real threat and dispute?
When making the goods and services list, keep in mind the golden rule: „As much as necessary, as little as possible.“ „The more the merrier“ is not the case here, because the more goods and services are mentioned in the application, the greater the risk that there will be an earlier owner of the trade mark or trade name who has an earlier right to the trade mark for some goods and/or services.
When compiling the list, it is also useful to note that if the trade mark has not been used for 5 years for the goods and/or services, the interested party has the right to request that the trade mark owner's exclusive right for those goods and/or services be revoked.
- Know that the sale and marketing of your own goods can be protected along with the application for protection.
- It is also important to know that the list of goods and/or services can be limited at any time, but the initial scope of protection can never be extended for the same application. If you have prepared the application quickly and want to complete the list even on the next day, it will not be possible. In this case, you will have to file a new application and pay a new state fee.
- Know that the state fee depends on the number of classes of goods/services indicated in the application, and not on the number of goods/services indicated in one class.
Last updated: 12.08.2022