With the increasing interest in the metaverse, the European trademark office, EUIPO, is experiencing a similar growth in the number of trademark applications intended to protect goods in the virtual world. Does this mean that you should take action now?
Should you protect your goods in the metaverse
The metaverse is still a fairly new concept and phenomenon. It is still unknown how big it will become, and what significance it will have for companies and consumers. Presently, it is primarily the large fashion houses, cosmetics retailers, and entertainment companies, which register their trademarks, concerning what is referred to as virtual goods. This applies, for example, to NIKE® and SEPHORA ®.
At first glance, you might therefore think that if you own a small company, it will not be necessary to register your trademark in the virtual world. However, this is not necessarily the case. If the metaverse is growing as predicted, this will imply that more people and companies will do business in the virtual world in the same way and with the same type of goods, as they do in the physical world.
Considerations concerning registration of virtual goods
The starting point is normally that what applies in the physical world, should also apply in the virtual world. This has recently been ruled by a US court of justice in a case between Hermès and MetaBirkins concerning an exclusive right to Non-Fungible Tokens (NFT). NFT refers to the virtual goods in the metaverse. The case was a matter of MetaBirkins having created some NFTs of Hermés’ bag from the real world, and fortunately the court of justice ruled that the NFTs were an infringement of Hermés’ trademark right (from the physical world).
Based on this, it is worth considering that it will probably be possible to enforce an infringement of a trademark in the virtual world, even though the trademark has not been registered for goods in the virtual world. However, Hermés is a very well-known brand, which therefore has a wider protection. If you have a less known trademark, there is no guarantee that the outcome will be the same.
Consequently, if you want to be absolutely sure to be able to enforce your rights, you will have a stronger position if you have a trademark registration, which also covers virtual goods and not only physical goods, if a virtual product infringes your trademark.
The actual categorization of goods in the metaverse
In the trademark classification system, virtual goods are classified in a separate trademark class, class 9, and this class covers all types of software.
If your trademark already includes class 9, you might as well consider including ”virtual goods” in the classification, if you think that it is likely that your goods will one day be traded in the metaverse.
Many companies do not have trademark registrations covering class 9. If you are one of them, it would be relevant to consider if you wish to pay extra costs in order to apply for a registration of an extra trademark class.
However, you should be aware that trademarks are subject to a use requirement after 5 years. If you can not prove after 5 years, that your trademark is being used for ”virtual goods”, you might risk that these goods or the entire class is removed from your registration, in case someone decides to challenge the trademark registration.
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