One of the most common misunderstanding when applying for registration of a trade mark with the Patent Office is a false conviction present among a number of entrepreneurs that, having obtained protection for the specified designation, they will hold a monopoly for all goods or services with respect to which such registered trade mark may be used. Nonetheless, it should be noticed that the trade mark is protected only with respect to those goods and/or services which are specified in the register. Renowned and commonly known trade marks are an exception; those trade marks are protected not in connection with the specialisation principle, i.e. with respect to any goods and services.

In connection with the above, the proper preparation of a list of goods and/or services is the key matter when applying for registration of a trade mark. For that purpose the Nice Classification should be used; there goods and services are divided into 45 categories (classes).However, it must be borne in mind that such classification is solely for administration purposes. That means that when verifying whether our designation constitutes infringement of any earlier trade mark, it is not sufficient that relevant goods or services are in other classes. Because it is possible that in the case of a potential dispute goods or services officially classified to other classes will be considered as similar or complementary.

In accordance with the established case law of the Court of Justice of the European Union (CJEU), when assessing similarity of considered goods or services, all important factors characterising mutual relation of such goods or services should be taken into account. These factors include, in particular the type of such goods or services, their purpose, the method of use, similarly  as whether such goods or services compete or are supplementary to each other. Other factors, such as, e.g. distribution channels of the specified goods, can also be considered. Further, if goods designated with the previously existing trade mark cover goods indicated in the application for registration of a new trade mark, such goods are considered as identical. The CJEU case law makes it precise that the fact that given goods are often sold in the same specialised points of sale can facilitate a given consumer to notice a close connection between them and enhance the impression that the company itself is responsible for their production.

Considering complementary goods or services, according to the established CJEU case law, these are such goods or services between which there is a close connection consisting in that that one type of goods or service is indispensable for use of the other type of goods or services, thus consumers can think that the company itself is responsible for producing such goods or providing such services. As a matter of principle, goods intended for various recipients cannot have a complementary character.

Further, it should be remembered that a list of goods and/or services should include all goods and/or services for the designation of which a trade mark is intended not only now but also in future. Unless at the time of applying for registration of a trade mark with the Patent Office we make a good, strategic decision regarding the scope of list of goods and/or services, when we wish to start using such designation also for other goods and/or services (i.e. not included on the register), it will be necessary to file another application. On the other hand, we must remember about the obligation to use a trade mark which occurs after the lapse of 5 years from the registration thereof. If, however, it is not used with respect to certain or all goods and/or services, there is a risk that upon a request of interested parties, the Patent Office will rule the expiry of the protection right for the trade mark (in entirety or in part). A shorter list of goods and/or services thus means a minor risk of collision with other trade marks.

Monika Kowalczyk
PATENT ATTORNEY