The NCIP clarification on the adjustment of the list of goods and services of an International trademark application at the request of the WIPO

Periodically, the National Center of Intellectual Property (the NCIP) receives requests from the World Intellectual Property Organization (WIPO) for the list of goods and services of an international trademark application, in which it is proposed to replace the service of wholesale and retail trade in goods of a certain class of the International Classification of Goods and Services with the service of wholesale and retail trade, listing specific goods.

These requests may refer not only to trade, but also to other services or goods, the name of which includes a reference to the class number of the International Classification of Goods and Services ("trade in goods of classes 29 and 30", "repair of tools included in class 09", "testing of equipment belonging to class 10").

Such requests are part of WIPO's policy to "cleanse" the listings of international registrations of any references both to goods listed in other classes of the same mark (internal references) and to goods not listed within that list (references to the International Classification of Goods and Services class numbers).

For internal citations, the policy of the NCIP and WIPO is the same: lists should not contain the designations "listed above", "above" and their equivalents. This makes the lists more definitive and also removes additional

issues in the case of partial assignments of marks.

With regard to references to the NCL class numbers, the NCIP approach is more rational. First, in this case the service is referred to by a defined and understandable term. Secondly, such a formulation allows for maximum scope of protection (comparison with the class heading, which may not cover all goods of the class, and the alphabetical list, which by definition is not exhaustive, is not in favor of the latter). Thirdly, material and labor costs of all persons involved in the registration process are saved.

It should be noted that it is the office of origin that has the final word on the designation of goods, so that even if no response satisfactory to WIPO is given, the mark will be registered in the international register with the original wording and the reservation that it is too vague from the point of view of WIPO. The applicant may participate in the process and request that the original wording be retained or replaced by a wording listing the goods, subject to the standard requirement that the list of the underlying mark not be extended in the international application.

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