The classification of goods and services in trademark applications
When you are looking to register a trademark for your business, you must describe the goods and services for which you want protection.
Broad but not too broad
The art is to formulate the description so that the protection is broad enough to cover all goods and/or services for which you use the trademark or plan to use it in the future (e.g., “jewelry”, “clothing”, “lamps”, “toys”). At the same time, the description should be broad enough to cover the goods and services for which you want to take action against others using the same or similar signs. A (too) limited description of the goods and/or services may result in a too limited scope of protection. For example, the holder of the “SPARTAN” trademark registered for clothing and sports articles could not take action against the use of the “SPARTAN X” sign for a television program, according to a ruling by the Appeal Court of The Hague. However, being too broad can also lead to legal complications.
Trademark application can be refused
The trademark offices can refuse the application if it does not describe the goods and services clearly and precisely enough. Terms such as “machines and machine tools”, “paper”, “rubber”, “repair”, “installation work” are not accepted. A vague or broad description does not serve legal certainty.
No more protection
A trademark registered for a vague or broad term may face difficulties in legal proceedings. For example, in a trademark opposition procedure or a lawsuit about infringement, it may be ruled that no protection can be derived from the trademark due to the vague term. However, it may still be possible to invoke the trademark if it is also registered for other goods and/or services, provided they are described clearly and precisely enough.
Adjustment of goods and services description
In certain cases, it is possible to adjust and clarify the description of goods and services even after the trademark has been registered. It may be advisable to do this before the trademark is invoked against a third party, to prevent a (partial) cancellation.
Registration cannot be declared invalid due to vague description
If you have a registered trademark with a vague description of the goods, there is no need to panic/ The European Court of Justice in the Sky/Sky Kick judgment decided this is not a reason for invalidation of the trademark.
Too broad description, bad faith?
Including goods and/or services for which there is no intention of use can indicate bad faith at the time of filing the trademark application. Merely applying for a trademark for a wide range of goods and services is not sufficient to assume bad faith. According to the European Court of Justice in the Sky/Sky Kick judgment, this is the case when:
- the applicant intended to undermine the interests of third parties in a manner inconsistent with honest practices; or
- the applicant’s aim was to obtain an exclusive right for purposes other than those falling within the functions of the trademark.
The second point is broadly formulated and does not require demonstrating that a specific third party is affected. This opens the door for any interested party to present factual situations and arguments to support the claim that an application was made for a purpose other than the functions of a trademark (indication of origin, communication function, investment function, and advertising function).
Partial bad faith
A trademark established to have been filed in bad faith is declared invalid. In the Sky/Sky Kick judgment, it was determined that this bad faith and invalidation can also apply to a part of the goods and services, specifically those for which there is no intention to use the trademark in accordance with its essential functions.
Ms. Leonie Kroon
Lawyer
kroon@dillingerlaw.nl