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What is the list of goods and services of a trademark?

The goods or services for which we file a trademark application are classified in the Nice Classification. The classification has an administrative function, and the number of classes for which we file a trademark affects the official fee for the trademark application and protection. 

When indicating a particular product or service, e.g. clothing, we must indicate the right class. For clothing, it will be Class 25 of the Nice Classification. Importantly, by indicating the given class you do not obtain protection for the entire class, but for the goods you specifically mentioned. 

The correct preparation of a list of goods or services means not only the correct classification of individual terms but, above all, the proper preparation of a trademark protection strategy. It is the list of goods or services that determines your area of exclusive use of the trademark. 

As a general rule, the infringement of the protection right for a trademark occurs when a similar or identical trademark is used for the goods or services for which you have registered and use the trademark.  

For example, having the wordmark ‘Markpresso’ registered in Poland with legal services indicated in the list, we can take action to prohibit others from using this trademark for legal services in the territory of Poland.

What else is worth considering? When preparing the list, it is better in some cases to choose more general terms such as the aforementioned clothing, which includes numerous specific goods (dresses, jackets, etc.); in other cases, it may be preferable to choose narrower terms, e.g., to minimise the risk of collision with another earlier trademark. 

Once our application is filed, we can reduce the list, but we cannot extend it by adding further terms (another trademark application would be necessary for this purpose). This is why we consider with clients at an early stage whether, for example, they are planning to launch new products or offer further services in a few months or a year. If the answer is yes, it is better to include them in the current list.  

If you would like to consult on the scope of protection of your trademark and obtain support or entrust the preparation of your list to professionals, please contact us. 

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