The influence of Metaverse
The metaverse is an immersive, virtual environment where users can engage with each other and digital content in real-time. It is a concept that has been around for years, but with advancements in technology, it is becoming more feasible and could potentially revolutionize the way we interact with each other and consume digital content.
The metaverse is a space where users can create, share, and sell their digital creations. However, this creates a whole new set of challenges when it comes to intellectual property (IP) protection.
Even if in the physical world IP is well understood and easy to enforce, in the metaverse, the lines can become a little bit blurred, and it can be difficult to determine who owns what.
Therefore, brands face a new challenge, the increasing number of copyright and trademark infringement cases in the virtual world. This issue highlights the importance of IP rights and a well-built IP strategy. Thus, trademark owners should consider expanding their IP assets to include downloadable virtual products to secure their brand’s presence in the metaverse.
Brands which protected their trademarks in the Metaverse
Major brands have taken notice of the trend towards engaging with customers in the metaverse and have been exploring innovative ways to make their presence known in this new digital world. Gucci is one such brand, having partnered with a virtual reality platform to create a virtual museum and store, where users can purchase and explore virtual Gucci products in an immersive environment that blurs the line between the physical and digital worlds.
The brand’s trademark has been registered under Nice Classification in class 9, which encompasses a variety of products and services, including “downloadable virtual goods such as clothing, footwear, bags, computer and phone cases, clutches, purses, eyewear, jewelry, watches, perfumes etc. being for use in online virtual environments”. It also includes “downloadable multimedia files containing artwork, text, audio, and video relating to fashion”, among other products and services.
Mars, the food manufacturer, has filed a trademark application for Snickers to enter the metaverse and NFT space, capitalizing on the growing interest in digital collectibles and NFTs. The brand’s trademark has been registered under Nice Classification in class 35, which includes “online retail store services featuring virtual products, namely, chocolate, confectionery, candy, gum, snacks and drinks”, among other products and services.
Carrefour, the French multinational retail corporation, has developed a new game level that promotes healthy eating habits in a virtual Carrefour supermarket to recoup hit points and heal characters for a healthy boost. To protect its trademark in the metaverse, Carrefour has registered its brand under Nice Classification in class 41, which includes “provision of virtual reality game software, downloadable and non-downloadable; virtual reality games services provided online from a computer network”, among other products and services.
Hyundai, the South Korean multinational automotive manufacturer, has partnered with Roblox to create Hyundai Mobility Adventure, a video game that immerses players in an experience between characters and Hyundai’s newest technology. The brand’s trademark has been registered under Nice Classification in class 42, which includes “design and development of virtual worlds application software; development of virtual reality software relating to avatars”, among others.
Samsung has launched its first metaverse store, Samsung 837x, in Decentraland, where users can browse collections or take on quests. The brand’s trademark has been registered under Nice Classification in class 42, which includes “providing virtual computer systems and virtual computer environments through cloud computing”, among other products and services.
Finally, McDonald’s has filed several trademarks hinting at plans to sell virtual food and beverages in the digital space. McDonald’s registered its trademark under class 43, which represents services such as “operating a virtual restaurant offering actual food and beverages”, among other products and services.
What do the offices recommend to properly register a trademark in metaverse?
Although the metaverse is lacking some clear guidelines, both the United States Patent and Trademark Office (USPTO) and the European Union Intellectual Property Office (EUIPO) shares a common objective, that of preventing the private monopolies and the so called “Wild West”. Both offices have provided some initial guidance for classification purposes, being fully committed to addressing the challenges posed by the commercialization of the metaverse.
The USPTO has offered the first indications on identifying goods and services required for metaverse-focused applications by encouraging the brands to clarify the wording of their goods and services. In this respect, the USPTO recommends specifications such as “in online virtual worlds” for class 9 and 35, and “created for entertainment purposes” for class 41.
The EUIPO aims to leverage new digital opportunities and trends like the metaverse. However, the main challenge lies in the description of virtual goods, which often lack clarity and precision. The EUIPO finds “virtual goods” unacceptable and requires a specification on the content, such as “virtual clothing”. The 12th edition of the Nice Classification will include the term “downloadable files authenticated by the NFT” in class 9, while services related to virtual goods and NFTs will be classified based on established principles.
In conclusion, the development of the metaverse is posing new challenges to intellectual property rights, especially for trademark owners. As the metaverse is becoming more mainstream, brands must consider expanding their IP assets to include virtual products to secure their presence in this new digital space. While guidelines are still in development, the USPTO and EUIPO have already provided some initial guidance for classification purposes, indicating their commitment to addressing the challenges posed by the commercialization of the metaverse. It is essential for brands to stay informed of these developments and build a well-built IP strategy that encompasses the metaverse to protect their trademarks and other IP assets.
We have acquired the skills and expertise to assist you in reviewing your trademark portfolio and provide comprehensive protection recommendations for your brands within the Metaverse and addressing any potential gaps in protection by adhering to the latest rulings issued by IP offices in relation to Metaverse protection.