Trademark protection in the metaverse
As a general rule, the scope of trademark protection is defined by the list of goods and services, which means the goods or services you indicated at the time of filing your trademark application and for which the trademark was registered. But will the registration of a trademark for regular goods (e.g., clothing) protect also goods in the virtual world, such as metaverse clothes or items of clothing presented in computer games? The question is whether items of clothing presented in the metaverse will be treated as clothes or, nevertheless, as computer software items or virtual goods?
When Birkin meets MetaBirkin – what does the law say?
The topic of trademark protection in the virtual world is not new, but it gained colour when the metaverse, which is described as a three-dimensional virtual world, came into the spotlight.[1]
This issue emerged in one of the disputes before an American court. Mason Rotschild created and offered NFT 'MetaBirkin’ – a digital version of Hermès' famous Birkin bags. The Hermès brand filed a lawsuit claiming that such actions infringe its rights, including the right to the ‘Birkin' trademark. In response, Rotschild argued that his actions were an artistic commentary on reality and there was no question of harm to the Hermès brand. However, the Court ruled in favour of the Hermès brand.
Protection of physical goods does not always cover virtual products
Can every trademark protected for physical goods be banned for use in the virtual world? In my opinion, no.
Elements of the virtual world can be treated as digital content, and their similarity to “real” goods is not so obvious. Only in a few years will it turn out whether this view is right. Nevertheless, many companies already file their trademarks not only for “real” goods but also for virtual goods.
For example, NIKE Innovate C.V. registered the word mark 'NIKE’ in the European Union Intellectual Property Office (EUIPO) for downloadable virtual goods and virtual goods sales services related to clothing or footwear (ZTUE 018586666). Such applications are on the increase and many entrepreneurs prefer to protect their brands also for virtual goods.
Another example: the Gibson brand known for the production of electric guitars, including the iconic Gibson Les Paul model, has applied to the U.S. Patent and Trademark Office for the registration of the trademark in the form of a guitar shape for goods in Class 9: a downloadable multimedia file authenticated by non-convertible tokens that contains graphics, text, sound and video and refers to music and entertainment.
EUIPO addresses the topic of trademarks in the virtual world
The European Union Intellectual Property Office also looked into this issue. The EUIPO’s materials indicate that when filing a trademark application for virtual goods, it is advisable to define them precisely and also that virtual goods or services may be indicated in classes 9, 35, 41 of the Nice Classification.[2]
For example, downloadable virtual goods, such as computer programmes containing bags for online use, can be indicated in Class 9, whereas the sale of virtual goods in the form of bags can be indicated in Class 35.
Class 41 is traditionally associated with entertainment, education and sports services. Within the scope of this class, we can consider indicating entertainment services in the form of providing a virtual world where users can interact for sports purposes or entertainment services in the form of providing virtual art or tools for the creation of virtual art.
However, this does not mean that only these classes will always be appropriate. Each case is individual and requires separate consideration of the appropriate classification of goods and services to ensure optimal protection.
Use of the term ‘metaverse’ in a trademark
And what about the use of the word ‘metaverse’ in a trademark and the assessment of its descriptiveness?
Here, too, there is no clear answer. In our practice, we have dealt both with the case where we succeeded in registering a trademark containing the word element ‘metaverse’ for real food-related goods and with refusal in another case.
It seems, therefore, that practice in this area may be very diverse in the coming years and what remains for us as attorneys is to actively participate in its development.
If you would like to update your trademark protection so as to include also virtual goods, we recommend taking actions already now. Just contact us and we will decide what to do next.
[1] https://www.collinsdictionary.com/dictionary/english/metaverse#google_vignette
[2] https://euipo.europa.eu/knowledge/pluginfile.php/185170/mod_label/intro/Metaverse%20Webinar-Review%20SL.pdf