17/11/2022
The terms “NFTs” and “the Metaverse” are becoming increasingly familiar in the world of trade marks. Plenty of big brands seeking to register their trade marks for use “in the Metaverse” are peppering their goods and services descriptions with the acronym “NFT” and the word “virtual”. The novelty of these terms (in the context of trade marks) and the speed at which they are appearing in trade mark applications has required IP Offices to adapt their classification practice to ensure that there is guidance for applicants on how and where such terms are correctly classified.
In early 2022 Italian tyre-manufacturer Pirelli attempted to file new trade mark applications at the EU IP Office (EUIPO) for Metaverse-specific terms. Pirelli’s approach was to add the word “virtual” to the beginning of all goods and keep these goods in their standard classes, as follows:
Class 12: Virtual vehicles for locomotion by land, water and parts thereof…
Class 14: Virtual jewellery and watches…
Class 18: Virtual backpacks; virtual handbags; virtual luggage…
The EUIPO objected to this approach and, in February 2022, instructed Pirelli to transfer all terms to Class 9, in line with the Nice Classification. The rational for the EUIPO’s objection was that “virtual” goods of any kind are considered to be software.
McDonald’s opted for a different approach when applying to register a trade mark at the EUIPO for “online retail services featuring virtual goods” in Class 35. The EUIPO rejected this term and requested that McDonald’s list out the specific virtual goods. The EUIPO’s approach here is consistent with how standard retail services are classified, by specifying the category of goods in question.
High-end luxury fashion house Gucci attempted to register a mark at the EUIPO covering “non fungible tokens (NFTs) or other digital tokens based also on blockchain technology” in Class 9. Whilst they opted for the correct class, the EUIPO stated that the type of digital item authenticated by the NFT or other digital token must be specified. For example, “non fungible tokens (NFTs) or other digital tokens based also on blockchain technology, namely, virtual clothing” would be acceptable. Given that an applicant is entitled to register a mark before the EUIPO for software at large, the Office’s approach to NFTs seems somewhat arbitrary (although sensible).
In the absence of official guidance from the EUIPO, applicants have encountered objections as they join the rush of brand owners seeking to future proof their trade mark portfolios.
In response, the EUIPO has recently released official guidance regarding how to correctly classify these terms in trade mark applications. The guidance can be summarised as follows:
- Applications including virtual goods and NFTs will fall under Class 9, with services relating to these goods being classified in line with current practice
- “Virtual goods” and “NFTs” alone lack clarity and precision and will therefore not be accepted
- “Virtual goods” must therefore be specified further by stating the content to which the virtual goods relate
- The type of digital item that the NFT is authenticating must be specified
- The term “downloadable digital files authenticated by non-fungible tokens” will be added to Class 9 of the 12th Editionof the Nice Classification which is due to be finalised in 2023
The UKIPO is yet to release their own official guidance on this matter. Whilst the UKIPO’s classification practice appears to be in line with that of the EUIPO on requiring specificity as to the nature of “virtual goods”, some applications have been accepted for “non-fungible tokens (NFTs)” at large. It is unclear whether the UKIPO will change or clarify their practice in the near future.
Although the EUIPO may have answered brand-owners’ questions in relation to how and where to classify virtual goods and NFTs, the question of proving genuine use of a trade mark covering virtual goods / services relating to virtual goods remains unanswered. Over time we will come to learn whether use of a mark in a virtual world will support use of the corresponding real-world goods, and vice versa. Certainly, it will be interesting!
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
