Ограничаване на стоки и услуги при търговска марка

When filing an application for trademark registration, choosing a name or logo is not enough. You must also specify the goods and services for which you want the trademark to be protected. It is this list that determines the scope of protection.

For example, a trademark for software in Class 9 does not automatically provide the same protection for children’s toys in Class 28. At the same time, certain software products and services may be similar to one another even if they fall within different classes under the Nice Classification.

But what happens if, after filing the application, you discover that the list is too broad, unclear or leads to a dispute with the proprietor of an earlier trademark? In such cases, it may be necessary to limit the goods and services. This may seem like a minor amendment, but it has important legal consequences.

Why Is It necessary to limit the list?

Most often, the reason is one of the following:

The Office may object that a particular term is unclear or descriptive;
The proprietor of an earlier trademark may file an opposition;
Sometimes the applicant simply realises that the scope claimed is broader than their actual business activities.

Narrowing the list addresses all three problems. The procedure may appear purely administrative, but it is subject to strict rules. These rules are essentially similar, but differ in significant details before the various national offices. This article focuses on the requirements of the Patent Office of the Republic of Bulgaria and the European Union Intellectual Property Office (EUIPO), as the offices most frequently used for applications by citizens of the Republic of Bulgaria.

The basic rule: the list may Be narrowed, but not expanded

After filing the application, you cannot add new goods and services or replace terms already claimed with broader ones. The reason is that the filing date determines the priority of the application in relation to rights arising later.

If, for example, you have claimed “beer” in Class 32, you cannot subsequently replace that term with the broader “alcoholic beverages” or add “wines” in Class 33. Corrections of obvious technical or linguistic errors that do not alter the substance of the application are, however, permitted.

Another important principle is that goods and services must be described with sufficient clarity and precision so that the scope of protection can be determined from the register. An excessively broad list is not always a problem in itself, but claiming categories without an intention to use them may, in certain circumstances, raise questions of bad faith.

How Can the List Be Limited?

In practice, there are three main approaches:

Deletion: you remove a particular good, service or an entire class. For example, “newspapers; magazines; books” becomes “newspapers; magazines”.
Specification: you replace a broad term with a narrower one. For example, “software” becomes “inventory management software”.
Exclusion: you retain the general term but expressly exclude a particular category, for example, “books, excluding dictionaries”.

Not every addition actually limits the scope. If you write “clothing, in particular T-shirts”, the list continues to cover clothing in general. Words such as “for example” and “including” usually provide illustrations rather than establishing a clear boundary.

It is equally important for the wording to be objective. Descriptions such as “luxury cars” or “high-quality clothing” do not give a sufficiently clear indication of the scope of protection.

How is the list Limited before the Patent Office in Bulgaria?

For national applications, limitation is governed by the Trademarks and Geographical Indications Act. The applicant may request an amendment on their own initiative until the decision on the application has entered into force. This also includes cases where an objection or opposition has already been filed.

The request must be submitted in writing in Bulgarian - in person, by post or through the Office’s electronic portal.

There is also a particular requirement that can easily be overlooked: if the request is submitted through a lawyer or an industrial property representative, the power of attorney must expressly authorise the limitation of the list or withdrawal of the application. A general authorisation to represent the applicant is not sufficient.

Under the national procedure discussed here, the limitation takes effect upon its entry in the State Register of Trademarks. In the event of irregularities, the Office provides a period for their correction.

Can Limitation resolve a Trademark dispute?

Yes, sometimes this is precisely the practical solution. If an opposition has been filed against an application in respect of certain goods and those goods are removed entirely, the subject matter of the opposition may also cease to exist. If the limitation is only partial, the dispute may continue in respect of the remaining goods and services.

For example, where an opposition has been filed against an application for “cosmetic preparations; perfumes; essential oils”, removing “cosmetic preparations” may allow the parties to assess whether there are grounds to continue the dispute over the remaining categories.

And what are the rules Before EUIPO?

For European Union trademark applications, the list may also be limited while the application is pending, including at the appeal stage. After registration, narrowing is carried out through a different procedure - partial surrender of the trademark.

An important difference concerns when the limitation takes effect. Before EUIPO, the limitation takes effect when the Office receives the request, rather than upon a subsequent entry in the register. It is therefore important to consider the wording carefully: once deleted, the goods and services cannot simply be restored to the same application.

The request must be unconditional. A statement such as “we agree to limit the list if the opposition is withdrawn” does not constitute a final limitation, but rather a proposal made during discussions. The request may be filed in the first or second language of the application, and no fee is payable.

As the EU trademark has effect throughout the entire territory of the Union, you cannot limit protection to a particular country by using a description such as “washing machines sold only in France”. The situation is different where the geographical indication describes the origin or characteristics of the goods themselves.

What Is the Most Sensible Approach in Practice?

First, try to identify precisely the goods and services for which you actually seek protection. “Accounting software” is clearer than “software, excluding gaming software”.

Second, check whether the new description falls entirely within the scope originally claimed. You cannot add a new type of activity that was not claimed at all under the guise of a “clarification”.

Third, for a national application, check in advance whether the power of attorney contains the necessary express authorisations.

Finally, where there is an opposition based on an earlier trademark, consider limitation as an opportunity for negotiations. Sometimes narrowing the scope of goods allows the dispute to be resolved through a trademark coexistence agreement.

How can KGK Law Firm assist you?

Limiting the list of goods and services may appear to be a formal step in the trademark registration procedure, but in fact it is of considerable importance to the scope of its protection. A properly worded list of goods and services is important both when initially filing an application and when a trademark dispute arises.

The KGK Law Firm team has extensive experience in intellectual property and trademark protection, assisting clients in developing an appropriate strategy for registering and protecting their rights.

If you are planning to register a trademark or have already received an objection or opposition, contact us for a consultation.