What is happening with trade mark law in the metaverse?
As our readers might know, the function of a trade mark is to serve as an indicator of origin, allowing consumers to distinguish the goods and services of a company from the ones of its competitors in the market. Therefore, trade mark law grants an exclusive right to the right holder and confers protection to a sign or logo in relation to the goods and services designated in the application. The classification of the goods and services is performed in accordance with the Nice Classification of Goods and Services. Notwithstanding, here arises one of the concerns as regards trade marks in the metaverse.
Until now, when filing a trade mark application, only the physical products that the owner intended to effectively commercialise were designated in the application. E.g. a company that sought to register a trade mark for shoes, would obviously apply for footwear in class 25 of the Nice Agreement.
However, as a consequence of the growth experienced by the metaverse and the disputes that have taken place in there, the whole system has been put under discussion. Namely, if the protection given by the current law and the classification system would apply to the metaverse.
What happens to the existing trade marks that only include goods and services focused on the real world? Will the same protection be applicable to the metaverse?
Actually, the products existing in the metaverse, like clothing or objects, are just the virtual appearance of the real product. They are represented by means of an NFT which, as explained in the previous episode, is an essential technology for the virtual assets to be purchased. Following the example mentioned above, if a popular brand commercialises shoes, which are registered under class 25 as footwear, and wants to expand its commerce to the metaverse, could this protection be extended to an NFT of those shoes? In other words, is the protection given by class 25 to “normal” footwear also applicable to an NFT? If not, how could companies obtain protection for their products and prevent the infringement of their rights in the Metaverse?
Apparently, these virtual representations should be considered for classification purposes as computer software, capable of representing those products in a digital environment.
For this reason, big companies are filing new trade mark applications in an attempt to adapt their rights to this new digital environment. In order to secure their assets or to enforce their rights against very similar or identical representations of their products in the metaverse, they cannot simply rely on their existing registered trade marks, if they do not own rights in classes covering computer software.
As a consequence, there has been an increasing trend to designate new classes including the mention of “virtual” for the goods and services at stake. Companies are resorting to classes 9, 35 and 41 - for goods and services respectively - to extend the protection to the metaverse.
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