Protection in the metaverse: EUIPO publishes practical advice for trademark classification

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With the growth of the metaverse and the ever-increasing use of NFTs, brand owners have been faced with the problem of how best to protect their assets both in the “physical world” and in the metaverse. Today, the EUIPO released much-needed guidance to help brand owners address this issue.

Practical advice

In the absence of any official guidance, it appears that the EUIPO has received an increasing number of trademark applications containing terms relating to virtual goods and NFTs which have been incorrectly classified. To address this issue, the EUIPO has issued the following guidance for trademark owners:

  • Virtual goods fall under Class 9 because they are treated as digital content or images. However, the term virtual goods by itself lacks clarity and precision and must therefore be clarified by indicating the content to which the virtual goods relate (for example, downloadable virtual goods, namely virtual clothing);
  • NFTs are treated as unique digital certificates stored in a blockchain, which authenticate digital items but are separate from those digital items. For the EUIPO, the term non-fungible tokens is not acceptable in itself. The type of digital item authenticated by the NFT must be specified (for example, a work of art authenticated by a non-fungible token). The 12th edition of the Nice Classification will integrate the term downloadable digital files authenticated by non-fungible tokens in class 9; and
  • Services related to virtual goods and NFTs will be classified in accordance with established service classification principles.

Comment

These practical tips provide much-needed clarity for trademark owners looking to protect virtual goods and NFTs in their trademark applications. It is logical that these virtual goods are covered in class 9 and that, for example, the retail sale of these virtual goods is covered in the usual class of services, namely class 35. We also anticipate that other introductions trading (including the UK IPO) will take the same approach when classifying virtual goods and NFTs.

We recommend that all trademark owners review their current trademark protection and file new applications for virtual goods and NFTs if necessary.

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