With the growth of the Metaverse and ever-increasing use of NFTs, brand owners have been faced with the problem of how best to protect their assets in both the ‘physical world’ and Metaverse. Now the EUIPO have issued much needed guidance to assist brand owners with this conundrum.

Practice Tips

In the absence of any official guidance, it appears that the EUIPO has been receiving an increasing number of trade mark applications containing terms relating to virtual goods and NFTs that have been incorrectly classified. To address this point the EUIPO has issued the following guidance to brand owners:

  • Virtual goods are proper to Class 9 because they are treated as digital content or images. However, the term virtual goods on its own lacks clarity and precision so must be further specified by stating the content to which the virtual goods relate (e.g. downloadable virtual goods, namely, virtual clothing);
  • NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital items but are distinct from those digital items. For the EUIPO, the term non-fungible tokens on its own is not acceptable. The type of digital item authenticated by the NFT must be specified (e.g. work of art authenticated by non-fungible token). The 12th Edition of the Nice Classification will incorporate the term downloadable digital files authenticated by non-fungible tokens in Class 9; and
  • Services relating to virtual goods and NFTs will be classified in line with the established principles of classification for services.

Comment

These practice tips provide some much needed clarity to brand owners seeking to protect virtual goods and NFTs in their trade mark applications. It makes sense that these virtual goods are covered in class 9 and that, for example, the retail of those virtual goods would be covered in the usual services class, namely, class 35. We also anticipate that other IPOs (including the UK IPO) will adopt the same approach when classifying virtual goods and NFTs.

We would recommend all brand owners review their current trade mark protection and file new applications for virtual goods and NFTs if necessary.