Brands ranging from Louis Vuitton, Gucci, and Valentino to Nike and adidas have made headlines over the past year after filing applications for registration for use of their famous trademarks in the virtual world, either reflecting existing use or seemingly indicating their intent to use such marks in the metaverse or in connection with non-fungible tokens (“NFTs”). Not limited to fashion and luxury names, brands across industries (think: KFC to the City of Beverly Hills) have followed the lead set by Nike last year, and rushed to trademark offices around the world to lodge intent-to-use applications – often in an attempt to protect their valuable assets in light of a lack of certainty as to how courts will view their existing “real world” rights (and registrations) and how trademark offices will handle applications that point to web3 technologies.
Given the increasing amount of trademark applications that contain terms “relating to virtual goods and non-fungible tokens” that it has received in recent months, the European Union Intellectual Property Office (“EUIPO”) has provided some initial guidance as to the approach that it is taking for classification purposes. (Trademark applications – and registrations – classify marks by use in specific classes of goods/services, and to date, most brands have filed applications that list use or intended use in Class 9 for “downloadable virtual goods including NFTs,” Class 35 for “retail stores for virtual goods,” and/or Class 41 for “entertainment services in virtual environments.”)
Focusing exclusively on Class 9 (and making no mention of Classes 35 or 41), the EUIPO states in its recent release that “virtual goods are proper to Class 9 because they are treated as digital content or images.” However, the trademark body claims that “the term virtual goods on its own lacks clarity and precision so must be further specified by stating the content to which the virtual goods relate (e.g. downloadable virtual goods, namely, virtual clothing).” The EUIPO notes that the 12th Edition of the Nice Classification, which will enter into force on January 1, 2023, will incorporate “the term downloadable digital files authenticated by non-fungible tokens in Class 9.”
As for NFTs, in particular, the EUIPO sets out a definition of the relatively novel technology, asserting that NFTs are “treated as unique digital certificates registered in a blockchain, which authenticate digital items but are distinct from those digital items. For the Office, the term non fungible tokens on its own is not acceptable.” (Emphasis courtesy of the EUIPO.) As such, “The type of digital item authenticated by the NFT must be specified.” Still yet, the EUIPO states that “services relating to virtual goods and NFTs will be classified in line with the established principles of classification for services.”
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