As of 20 December 2024, the “Communiqué on the Classification of Goods and Services for Trademark Registration Applications,” to be applied to trademark applications, was published in the Official Gazette dated 20 December 2024, No. 32758.
Various difficulties had arisen due to certain goods and services not being covered by the previous Communiqué — difficulties that only became apparent once encountered. For example, because downloadable versions of software were not explicitly addressed, applicants faced considerable challenges with US filings.
The Classification Communiqué is, of course, administrative in nature. Still, it is not an unnecessary detail that can simply be disregarded. Both when a Turkish application is used as the basis for a filing in another country, and in priority claims, differences between goods/services lists frequently create significant complications.
The new Communiqué’s inclusion of details such as NFTs and downloadable software is far from negligible. Several of the issues I addressed in my book “Interpretation of CJEU Approach to the Trademark Goods and Services Comparison” — with various examples — may now be resolved by this update.
While I would not say the update is flawless or complete, the added terms do appear capable of eliminating certain problems, particularly for filings in countries like the US. Although I am not in favour of the “cover whole class” approach or of measures such as additional fees to prevent it, and would prefer goods and services to be listed individually, such changes would require a fundamental overhaul of the current system, which is not yet feasible. At the very least, care should be taken to ensure that new practices do not create fresh problems of their own.
Written by: Deniz Çelikel • Patent and Trademark Attorney
