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Virtual goods, NFTs and the Metaverse

Sonia García

Introduction

Trademark offices are increasingly receiving applications containing terms relating to non-fungible tokens (NFTs), the metaverse and virtual goods.

Although the metaverse (a virtual space where users can and will interact and connect with each other) is still under development, it has already taken hold in many sectors.

Some companies, such as Meta or Microsoft, are in full development mode, trying to capture the spoils of the metaverse.

As in the physical world, brand owners who wish to protect their assets or enforce their rights in the metaverse may need to register their trademarks.

How to protect your trademarks

Some companies have already implemented systems to protect their trademarks in the metaverse, in sectors such as cosmetics, sports, fashion and entertainment, covering products in class 09 in addition to the usual classes covering their physical products and services.

However, this may not be sufficient to cover all aspects of technology products and services such as NFTs, Virtual Reality (VR), Artificial Intelligence (AI), etc. For example, NFTs are a type of digital token that represents a unique and limited asset on a blockchain platform. Depending on their characteristics and functions, NFTs may fall into the category of financial instruments under EU law, which would trigger a different set of rules and obligations for their issuers and users.

How to classify trademarks for technology goods and services in the EU and Spain

If you are developing or offering technology products and services such as NFT, AI, VR, etc., you may wish to protect the trademark that will identify such technology products and/or services in the market.

However, registering a trademark in the EU is not always a straightforward process. When it comes to trademarks for such technological goods and services and other cutting-edge innovations, it can be difficult to navigate the classification system in accordance with EUIPO practice. It is therefore essential to know and understand in advance the content of the various classes of the Nice Classification and the corresponding goods and services in order to obtain the necessary protection for the mark.

Be precise: When choosing the classes and terms for the application, be as precise as possible in describing the goods and services so that they reflect the nature, purpose, function, characteristics, quality, etc. of the goods and services. For example, NFTs, which are computer programs in a broad sense, can be classified in Class 9. In fact, in the current 12th edition of the Nice Classification, terms such as “downloadable digital files authenticated by non-fungible tokens” are included in Class 09. If NFTs representing digital works of art are offered, terms such as “digital art tokens” or “non-fungible tokens with digital works of art” can be used.

Be flexible: When choosing classes and terms for the application, be flexible enough to adapt to possible changes in the business environment. Technology products and services are constantly evolving due to innovation, customer demand and market competition. Therefore, classes and terms should be chosen that are broad enough to cover future developments or variations of products and services. For example, if you provide VR experiences for entertainment, you may want to include classes or terms related to games (classes 09 and 41), education (class 41), token issuance (class 36), etc., as well as future developments in VR technology, such as augmented reality or mixed reality.

Although the EUIPO’s criterion is still uncertain, in its practice virtual goods belong to class 09 because they are treated as digital content or images. However, according to the EUIPO, the term “virtual goods” itself still lacks clarity and precision, so that its characteristics, and in particular the type of digital article authenticated by NFT, should be further specified.

Services related to virtual goods and NFTs will be classified according to the established classification principles for services, such as the issuance of value tokens/bonds in class 36 or the provision of an internet platform for buyers and sellers of non-fungible tokens (NFTs) in class 35.

The latest edition of the EU Trademark Examination Guidelines is expected to enter into force shortly to clarify the practice of the EUIPO.

In the case of the Spanish Patent and Trademark Office, the criteria are even more uncertain. Although concepts such as downloadable digital files authenticated by non-fungible tokens (NFT) in Class 09, the provision of temporary use of non-downloadable software to enable members of an online community to receive and access downloadable digital files in Class 41 or the provision of information about non-downloadable software to enable members of an online community to receive and access downloadable digital files in Class 42 have been provisionally accepted, the Spanish Office notes that the classification of goods and services provided in the virtual environment is under evaluation and that a second review of the specification covering the provision of services in the virtual environment may be carried out at a later stage.

To sum up

The classification of EU (and Spanish) trademarks for technological goods and services requires careful consideration and research. Choosing the right classes and terms that accurately describe the goods and services will help to ensure sufficient protection for trademarks aimed to cover these types of technological goods and services, which will ultimately be adequate against potential infringers. 

If you are considering doing business in the metaverse in the near future, it is advisable to take this into account when filing a trademark application and make sure to include the specific classes and terms for virtual goods and services.

As there is no international consensus yet and practice may change, it is advisable to check the current criteria of each trademark office in advance to verify any possible changes in their practices.

About the author

I advise my clients in the management of their portfolios of Trademarks, Designs and Patents, including PCT applications, European Patents, and national validations.

I act directly before the EUIPO, SPTO and WIPO, and coordinate the actions before the different Patent and Trademark offices of each country.

I offer advice to foreign clients for the protection of their rights in Spain and the European Union, as well as to national clients with international presence both in the management and defense of their rights, including negotiations, preparation and drafting of contracts and proceedings before the Intellectual Property Offices.

I also provide portfolio analysis services, helping to design internal management strategies, training and protection and defense of the clients’ main assets.

I put special emphasis on the needs of each client, thinking about its sector, its business implementation, its expansion plans as well as the competition in the market, to be able to provide a personalised service that meets the real needs at all times.

Speaks Spanish and English

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