Can you register a trade mark for non-fungible tokens? Do virtual sneakers fall within class 9 for software, or in class 25 with footwear? What about the Metaverse?
Faced with an influx of applications (and questions) about the Metaverse, NFTs and other emerging technologies, trade mark offices around the world are starting to respond. We take a look at the position in Australia, New Zealand, Singapore, Hong Kong and Malaysia.
What official guidance is available?
Virtual goods and services
All five trade mark offices have indicated that broad descriptions such as “downloadable virtual goods” are not likely to be acceptable. Applicants will need to specify the nature of these goods.
Classification generally depends on the purpose and impact of the goods and services in the “real world”. For example:
- virtual restaurant services would likely fall within class 41 as a form of entertainment, if no food is being prepared or consumed in the “real world”.
“Does the Metaverse Need Burritos? Chipotle Went on Roblox to Find Out” (source)
- however, if your virtual kitchen simply involves operating a restaurant online (offering delivery services instead of sit-down dining) then these services remain in class 43 as physical food is still provided and consumed in the “real world”.
“Existing only online, some virtual venues operate out of ghost kitchens (commercial kitchens without a traditional restaurant attached).” (source)
Metaverse related goods and services
The Metaverse is a virtual environment where users can interact with said environment and each other.
Goods and services relating to the Metaverse are generally classified according to established principles, and noting the purpose and impact of the goods and services in the “real world”. For example:
- Banking services provided via a virtual environment have the same “real world” impact as those provided in person, so both would likely fall within class 36.
- Travel simulations in a virtual environment do not involve physical transportation and would likely fall within class 41 as an entertainment service, instead of a class 39 transportation service.
But note that…
IP Australia has indicated a preference for the term “virtual environments” over “Metaverse”: “While we will accept the terms “metaverse” and “web3” in specifications, the term “virtual environments” is preferred for its broad application to many contexts“.
And importantly…
The position in Hong Kong does not represent Mainland China! The China National Intellectual Property Administration currently does not accept trade mark applications for goods and services relating to the Metaverse.
Non-fungible tokens
All five trade mark offices do not accept broad descriptions such as “non-fungible tokens”.
An NFT is not treated as a good or service in itself, but a means of certifying authenticity or ownership of an asset, so applicants need to specify what is being authenticated, for example:
“The pair is equipped with a secure NFC chip, placed under the sole of the right foot, which provides access to a platform to obtain its Digital Certificate of Authenticity. Holders of the certificate benefit from news on future collections.” (source) |
⇒ | Sports shoes authenticated by non-fungible tokens |
“Gucci is diving into virtual luxury footwear with a new exclusively digital pair of sneakers called The Gucci Virtual 25 that can be “worn” in augmented reality (AR) or used in partnered apps like Roblox and VRChat.” (source) |
⇒ | virtual goods, namely downloadable image files of sneakers authenticated by non-fungible tokens |
But note that…
Again, the position in Hong Kong does not represent Mainland China. The China National Intellectual Property Administration currently does not accept trade mark applications for goods and services relating to NFTs.
Key takeaways
While there appears to be some convergence in the classification of emerging technologies, each trade mark office has its own examination practices and there is no “one size fits all” approach to obtaining protection across multiple territories.
If you have any questions about protecting a brand or invention in relation to emerging technologies, please reach out to any of our IP experts.