Drafting a specification that survives a challenge
Guide · 30 September 2026 · ALIPA
The list of goods and services in a registration, its specification, decides what a trademark protects. It is tempting to claim widely, in case the business grows. The SkyKick litigation, which we covered in Sky vs SkyKick, showed the risk: sweeping terms such as "computer software", claimed with no intention of using the mark across that whole field, can expose a registration to attack for bad faith. The lesson travels well beyond Europe.
Practical points
- Start from the business. List the goods and services the brand is used for today, and those genuinely planned for the next few years. Claim those.
- Prefer precise terms to class headings. "Downloadable software for migrating email accounts" tells the world, and a court, exactly what is protected. "Computer software" claims a monopoly few businesses could justify.
- Keep evidence of intention. Business plans, launch timelines and product roadmaps from the filing date are what answer a later challenge that the mark was never meant to be used for part of what it claims.
- Remember that breadth has a cost. Wide specifications draw oppositions and objections, and in many systems goods and services that go unused for a period, commonly five years, can be struck out.
- Review before you expand. A renewal, a new market or a Madrid filing is the moment to check that the specification still matches the business.
Why it matters more for international filings
An international registration under the Madrid System can be no broader than the basic mark it rests on, and for five years it stands or falls with it. A precise home specification is the foundation for everything filed abroad: see our guide to Madrid filings.
We review specifications as part of every clearance and filing, and audit existing portfolios before renewal or expansion.