The EUIPO recently published a warning about problems encountered with long lists of goods and services.

The Office stated:

The Office has recently observed a trend where certain EUTM applications contain unusually long lists of goods and/or services. Where normally the average number of terms applied for lies within a range of 60 to 100, these big applications contain 50 times the average number of terms. There has even been a considerable increase in the number of applications that have exceeded 10 000 terms.

The Office would like to remind the users that long lists of goods and/or services may lead to a number of disadvantages for the applicant, namely:

• a higher risk of classification deficiencies;
• delays in publication and registration of the EUTM;
• an increased risk of conflicts with other trade marks (oppositions);
• an increased risk of a trade mark being eventually cancelled because of a similarity to an earlier mark or non-use of all the registered goods and/or services.

In addition, the Office strongly recommends the use of the G&S builder.

Robert Guthrie, Chair of the MARQUES European Trade Mark Law & Practice Team says:

It seems that some of these incredibly long lists of goods and services have arisen because of the way in which the EUIPO's goods and services builder tool has been used and in particular the ‘Class 35 and 37 assistant’ – see this article on WTR here. This does highlight a wider issue that whilst the goods and services builder does help and encourage applicants to use terms that will be acceptable to the EUIPO and national offices, it also allows them to easily compile long lists of goods and services in an effort to ensure the widest possible protection for their mark. The EUIPO has provided some reasons why these long lists can be disadvantageous to the applicant. It is also worth flagging the pending reference to the CJEU (C-371/18, Sky and Others) in which the UK courts have asked weather ‘[it can] constitute bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services?’.