Important changes of the examination practice in the trademark department of the German Patent and Trademark Office (GPTO)

The trademark department of the German Patent and Trademark Office (GPTO) changes its examination practice of the list of goods and services for all German trademark applications filed on January 1, 2011, or later:

Goods or services, which can be contained in different classes, but are listed under one or more specific classes, must no longer be defined more precisely with regard to their classification, since the classification of goods made by the Applicant is regarded as specific enough by the trademark department. For example, a good “motor” classified in a trademark application under class 7 will no longer result in an objection by the trademark department as being to unspecific, but automatically limited to motors contained in class 7. Obviously, this new practice of trademark examination will lead to less objections of the lists of goods and services of German trademark applications. However, this practice change has on big drawback for trademark Applicants: an unspecific good classified in a trademark application in one specific class can after filing not be extended to another class or moved from the selected class to another class (for example, “motors” classified in class 7 in an application can after filing not be moved or extended to class 12 in order to protect also “motors” contained in this later class). Thus, trademark Applicants have to be more carefull when drafting lists of goods and services in the future since their options to change the list of goods and services will be significantly restricted due to the examination practice change.

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