Specification drafting: a quick guide

Drafting a specification of goods and services should be given careful thought to avoid a number of possible pitfalls.

What's the issue?

• Getting a specification of goods and services right can be a difficult task. While the Nice classification (the international system for classifying goods and services for the purposes of trade mark applications and registrations) provides a framework, it is updated annually. Different and changing interpretations of terms and quirky rules on punctuation can make drafting challenging, as can evolving technology, case decisions and amendments to IPO practices.
• If a specification does not meet the rules, it can take time and money to resolve the issue with the IP Office. Since specifications cannot be broadened after filling, some errors cannot be corrected.
• More generally, if a specification is drafted too narrowly or imprecisely, there is a risk that it won't be future proof and that further filings will be needed, leading to additional costs, increased risks of conflicts with intervening rights and potentially even allegations of ever-greening (see our article on this here). It can also make it more difficult to take action against conflicting later rights. Conversely, going too broad can increase the risks of conflicts with prior rights holders and future non-use cancellation actions.
• In addition, a broad specification can attract challenges on bad faith from the UKIPO or third parties if it looks as though you don't reasonably have an intention to use the mark on some/all of the goods/services.
• All this means that specifications should be drafted carefully at the outset and that existing specifications should be reviewed regularly. Here we consider some of the key do's and don'ts when drafting a specification of goods and services for UK and EU trade mark applications. 
  
   

Key do's

• Do cover current and anticipated plans, leaving some room for future expansion (within reason). This is a balancing act as unduly broad terms can create an objection or conflict, whereas more defined ones can avoid this. 
• Do review product literature, websites, pitches and the like to determine what goods and services ought to be covered. Earlier accepted specifications for the same or similar products or services should also be considered. It's also worth taking a look at what any competitors have covered, but these should be used as a reference, not a resource.  
• Do be clear and precise. Generally terms will be given their natural and usual meanings, but additional information and/or classes may be required in certain circumstances. For example, "clothing" usually falls in class 25. However, there are specific exceptions: clothing for protection against fire is in class 9, clothing for operating rooms is in class 10, clothing for pets is in class 18 and clothing for dolls is in class 28. If these additional classes aren't covered, protection won't be obtained for potentially key items.
• Do use correct punctuation. In specifications, the use of a comma separates enumerated items within a broader category or expression whereas the use of a semicolon separates whole expressions. Incorrect punctuation can mean a lack of protection. Be careful in using parentheses. These have the effect of restricting the scope of the protection requested to the terms placed between them. For example, in the recent Volkl case (T-155/21), a class 9 specification for "special shoes (firefighters' shoes)" was deemed to cover "firefighters' shoes" only.
• Do avoid specifically excluded terms. The UK and EU IP Office's will object to a number of terms which it considers too imprecise or broad including "machines", "goods made from paper and cardboard" and "repair services". Likewise, "retail", "wholesale" and "mail order" services must be clarified – "relating to", "in relation to" or "connected with the sale of" followed by the items being provided are all acceptable terms.
• Do add "parts and fittings" to all goods classes and "information, advice and consultancy" to all service classes, if appropriate.
• Do keep up to date with changes to IP Office practices. For example, the recent UKIPO PAN.
• Do beware of unusual or translated terms as these can attract objection and take time and money to resolve.  
• Do use classification tools. Your IP lawyers should have their own tools. Finding numerous examples of the acceptance of a term is helpful, but not fool proof: practices change, and IP Office's won't perpetuate errors.  
• Do keep up to date and accessible records of any specification limitations agreed as a result of negotiated settlements with third parties since these will need to be reviewed for each filing to see if they are relevant. 
• Do bear in mind that different jurisdictions have different rules on acceptable specifications and that, although most countries use the Nice classification, they might not use the most up to date version. In some countries, use must be proven before registration is granted and in most jurisdictions a registration can be open to at least partial revocation if the mark is not put to genuine use on some or all of the goods or services covered for a certain period of time (five years from registration in the UK and EU).
• Do work closely with your legal advisers to make sure your specification of goods and services is fit for purpose. 

Key don’ts

• Don't generally use Nice classification headings as they won't protect all goods or services in that class and are often considered too broad. Likewise, it is not possible to have a specification for "all goods/services in this class". The specific term must be listed.
• Don't fall foul of the UKIPO's recent PAN. It says that filing for all classes, covering all goods in class 9 and using other manifestly and self-evidently broad specifications will result in an objection from the UKIPO (although the applicant will be given the chance to defend the application). 
• Don't invite unnecessary allegations of bad faith from third parties. Think carefully about whether you have a genuine intention to use the mark on the items listed. When using a broad term (like computer software) the rule is that it will be held partially invalid for bad faith if it includes distinct sub-categories for which there is no genuine intention to use the mark. That will vary from item to item. Consider the balance between possible bad faith claims and a broad specification.
• Don't go too narrow either. One approach is to use a broad term, followed by more specific ones. What's best will vary depending on the specific items of interest.
• Don't cover items such as advertising services, stationery materials, internal processes and methods of delivery or sale unless they are genuinely provided to others. For example, its is not necessary to cover advertising services if the only items being advertised are the applicant's own. Only those providing advertising services to others need cover this term.
• Don't use ambiguous terms such as "namely", "including" and "in particular". These may not face an objection, but may be interpreted conflictingly as either giving examples, or limiting a list. If a limitation is required, use "all being" or "specifically".
• Don't include abbreviations unless they are very common and generic terms (eg DVD). Likewise, avoid using trade marks (Frisbee, Botox) or geographical indications (champagne, tequila) in specifications,  instead use the generic term such as "sparkling wine".
• Don't rush specification drafting.