Literally meaning “beyond the universe,” the word “metaverse” generally refers to a virtual and immersive world with 3D experiences where users can interact with each other in a digital environment. For example, users in a metaverse are able to buy for their avatars “virtual products”, including virtual clothing, eyewear, footwear, sports equipments, cars, and so on.
As the world’s leading companies increasingly focus their attention on developing metaverses, big brands are entering the Metaverse through gaming, social networks and virtual commerce, and are expected to play a decisive role in shaping consumer’s purchasing decisions. Therefore, protecting and enforcing trademark rights in this unchartered world will be an important issue for trademark owners to market, promote, and advertise their goods and services in metaverses.
For example, in order to step into metaverses, Nike has filed with the U.S. Patent and Trademark Office for some of its famous marks, such as “Nike”, “Jordan”, the “swoosh” logo, and the slogan “Just Do It” in respect of the following goods and services:
- Class 9: Downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in online virtual worlds.
- Class 35: Retail store services featuring virtual goods, namely, footwear, clothing, headwear, eyewear sports bags, backpacks, sports equipment, art, toys and accessories for use online; on-line retail store services featuring virtual merchandise, namely, footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories.
- Class 41: Entertainment services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use in virtual environments
Our searches into the public database of the Taiwan IP Office (TIPO) show that Nike also filed a number of applications in Taiwan in respect of the same goods/services in Classes 9, 35 & 41 as recited above. Those applications are currently under examination; it remains to be seen whether and how the designated “virtual goods/services” will be acceptable for registration in Taiwan.
Can trademarks to be used for “virtual products/services” be filed for protection in Taiwan?
Although not a party to WIPO, Taiwan adopts the Nice Classification of Goods and Service for categorizing goods and services, while dividing the Nice Classes into sub-classes and different groups based on local practices. Up to this moment, however, the TIPO has yet to issue any specific guidelines as to how trademarks to be used for “virtual products and services” can be filed for protection. Nor has the question been answered in any guidelines how virtual products should be categorized (for example, should “virtual clothing and footwear” be categorized in Class 9? Are they are related to the goods “real clothing and footwear” in class 25?) As such, applications for such marks are still being examined on a case-by-case basis in terms of appropriateness of the designated goods/services.
In view of the challenges the ever-changing and still sparsely regulated metaverse presents, trademark owners are recommended to consult with professional trademark attorneys to develop tailor-made descriptions for their designated services and virtual goods. The standard service/goods descriptions offered in the Classification Manual adopted by the TIPO might not best fit their needs.
Are “Meta” or “Metaverse”-formative marks registrable?
It has been no news that many of the world’s largest companies, such as Alibaba and Tencent, have rushed to file trademark applications for “Mataverse”-formative trademarks in China, obviously for the purpose of capitalizing on this emerging technological and legal landscape. Besides, according to the data released by the TIPO, a number of trademark applications have also been filed in Taiwan for marks containing the word “Meta” or “Metaverse”. However, are these “Mataverse”-formative marks registrable?
Under Paragraph 1 of Article 29 of the Taiwan Trademark Act, a merely descriptive mark consisting exclusively of a description of the quality, intended purpose, material, place of origin, or relevant characteristics of the designated goods or services cannot be registrable since it is devoid of distinctive character.
Therefore, more likely than not, at least for the time being, applications for a “Meta” or “Metaverse”-formative mark are quite unlikely to be allowed for registrations in Taiwan, since they are merely descriptive of the virtual goods and services for which the marks are sought.
On the other hand, if a “Meta” or “Metaverse”-formative mark is sought to be registered in respect of the “real world” products being remote in nature from virtual goods and services, such as cosmetics and perfumery for the care and beauty of face, the chances of success in registering “Metaverse”-formative marks will be increased because the source of product rather than the product itself is adequately identified.
Trademark / Copyright infringement issue in Metaverse
A Trademark infringement occurs when a person uses a mark identical or similar to a registered trademark in respect of identical or related goods/services, thereby causing consumer confusion. As it can be expected, legal issues may arise when virtual goods (such as virtual apparel) bearing a registered trademark of others in the real world are used (such as worn by an avatar) in a metaverse. When a mark registered in relation to “real clothing” in Class 25 is being used on “virtual clothing” in the metaverse, it is possible to mislead consumers into believing that the virtual clothing is offered or licensed by the real clothing company, namely the trademark owner.
Whether and how the IP rights in the real world can be extended or converted to a virtual world is another difficult issue, as differences between real world goods and virtual goods do exist. Under the current practices, it is unclear whether the use of a trademark in respect of a virtual product constitutes use in respect of a real world product covered by a trademark registration. For the sake of prudence, conducting a trademark availability search is imperative for a metaverse developer before launching a virtual product in its metaverse, as it helps determine whether there exist any prior registrations/applications and it helps avoiding the risk of using others’ brands on the virtual products/services.
Besides, if a stylized brand satisfies the “originality and creativity” requirement, it is entitled to copyright protection in addition to trademark registration. Accordingly, unless a “fair use” defense can be established, unauthorized reproduction of a trademark eligible for copyright protection on “virtual products” used for their avatars in the metaverse will likely lead to copyright infringement. Therefore, it is advisable that before investing time and resources in developing a metaverse, metaverse creators should carefully evaluate their intellectual property rights and consider whether to seek the right owner’s permission to use a trademark/copyrighted work on virtual products.
As more and more companies are entering metaverses, developing a trademark protection strategy to secure brand protection becomes ever more important. The foregoing contents present just some examples of legal issues already posed by metaverses, while other complicated issues such as jurisdiction, contractual and privacy issues will surely arise as metaverses continue to evolve to challenge the established legal landscape absent any precedents in this regard. It remains to be seen whether and how the legal regimes applicable to the registration and use of trademarks in the real world will extend to the virtual world.