The UK Intellectual Property Office (UKIPO) has published a practice amendment notice (PAN) confirming its approach to the classification of NFTs, virtual goods, and services provided in the metaverse. Coming nearly a year after a corresponding notice released by the EU Intellectual Property Office, this PAN provides more detailed guidance including specific examples, which should make it easier for applicants to avoid specification objections and issues.
Given that NFTs are inextricably linked to the assets to which they relate, the UKIPO will not accept NFTs as a classification term on their own and will instead request that the assets to which they relate are also specified. Examples of acceptable terms include:
- Digital art/downloadable graphics/digital audio files authenticated by non-fungible tokens [NFTs].
- Downloadable software, namely, [list the type of goods], authenticated by non-fungible tokens [NFTs].
To cater for the possibility of NFTs being used to authenticate physical assets, the UKIPO will allow a reference to NFTs in the appropriate goods class, eg by adding authenticated by non-fungible tokens (NFTs) after handbags in class 18 or clothing in class 25.
The accepted language in relation to retail services and/or provision of NFTs via online marketplaces in class 35 includes:
- Retail services connected with the sale of [eg virtual clothing, digital art, audio files] authenticated by non-fungible tokens.
- Provision of online marketplaces for buyers and sellers of goods and services which are authenticated by non-fungible tokens.
If access to certain services is linked to an NFT, such as club entry, these services would still fall in class 41 (entertainment).
Although all virtual goods belong in class 9, they still need to be defined clearly and concisely and it would not be sufficient to refer broadly to virtual goods. Instead, wording such as downloadable virtual clothing would need to be applied for.
The UKIPO has also confirmed that it will accept services provided by virtual means and via the metaverse as long as they fall in the correct class for the services themselves.
However, where the service itself is provided in the metaverse, eg food delivery in the metaverse with the avatar eating the food, such services would not fall in class 43 and may instead be defined more generally by eg entertainment services, namely, provision of a virtual reality or metaverse based simulation gaming service.
Although this PAN is significantly more detailed than the earlier EUIPO guidance, it is squarely in line with its predecessor which also confirmed that virtual goods fall in class 9 and must be further specified.
Similarly, the EUIPO's requirement for the assets authenticated by NFTs to be spelled out in the specification was repeated by the UKIPO, as was the requirement for services relating to virtual goods and NFTs to remain in their respective classes.
It is reassuring to see the respective offices specifying the same rules, which should hopefully limit the number of objections. Nevertheless, this UKIPO PAN is effective immediately so any applications for these goods/services claiming priority from filings approved by other IPOs may need looking at again if they are not in line with this notice.