Thursday, 23 October 2008

Drafting trade mark specifications

The specification of goods or services for which a trade mark is registered is supposed to reflect what the mark is being used for. An application will be invalid, or partially invalid, if it is made in bad faith, and that can cover the situation where the specification (nowadays called a list) of goods or services is over-ambitious.

Moreover, a UK application embodies a declaration to the effect that the mark is being used on everything in the specification, or the applicant intends so to use it. Signing the application form is not something to do lightly.

That said, it is hard to make a false declaration. Goods or services can be described at many different levels of generality, and the Nice Classification is just the highest level of generality. An applicant could truthfully say that the trade mark would be used on clothing if he made teeshirts, although that use would be most unlikely to support the registration. The Minerva case illustrates one consequence of over-ambitious claiming.

It seems that the practice of kitchen-sink drafting (or actually non-drafting) is becoming more common. If so, it is in my opinion an abdication by lawyers of their responsibilities to their clients. Getting the widest possible protection might seem clever, and saving costs by not crafting the specification might appeal to the client, but it might merely defer the expense which could end up being much greater.

It has been suggested to me that this is a result of avaricious lawyers trying to create invalidity work for themselves. it seems more likely that it is a result of the box-ticking approach which is rife in so many areas of our professional lives.

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