Marks in the metaverse: how to take preventive measures to protect them adequately

28 March 2022

Discover the preventive actions that must be taken in order to properly project brand protection into the new virtual environments or metaverses.

28 March 2022

In recent months, a new term has entered the vocabulary of all of us with force: the metaverse. And it seems to be here to stay. Internet evolution has taken us to Web3. A new scenario in which virtual reality, augmented reality, NFTs, cryptocurrencies, avatars, the metaverse, new ways of interacting, and new virtual environments force us to reformulate and adapt our physical world realities to this new virtual world.

In this new Web3 environment there are new ways to communicate, to interact, to cooperate, to have visibility, and to generate business.

This new reality is full of legal uncertainties that affect many areas. Among others, for example, the regulation of transactions with cryptocurrencies, their taxation, the protection of data provided in this new environment, copyright (with the creation and exploitation of NFTs, creation and use of collaborative metaverses) and, of course, intellectual property (in terms of inventions, distinctive signs and creations of form).

It is not the first time, nor will it be the last, that commercial realities force a rethink of pre-existing paradigms to find legal solutions to new realities.

In this sense, intellectual property and copyright take on a vitally important role. Examples of this are the adoption of the Paris Convention for the Protection of Industrial Property (in 1883), the signing of TRIPS within the context of the Marrakech Agreement establishing the World Trade Organization (in 1994), or the creation (in 1999) of the Uniform Domain Name Dispute Resolution Policy by WIPO as a response to the problem of bad faith registration of domain names.

Probably in the next few years (or months, since everything related to Web3 and metaverses has taken supersonic speed), States and international organizations will have to adopt measures for the protection of Intellectual and Industrial Property in this new virtual reality.

In this article we will discuss trademark protection in the metaverse (or metaverses, as there are several of them).

It is worth bearing in mind that a significant number of companies have already realized, within just a few months, that presence in the metaverse is essential. We are facing a new showcase where brands are present, whether for advertising purposes, marketing virtual assets, offering services in virtual communities, and strengthening their ties with a community of users who are or may soon become customers.

The question is not whether brands should have a presence in the metaverse, but how. This new ocean has become for many companies a “must”. Brands such as NIKE, CONVERSE, L’OREAL, McDONALDS, ZARA, H&M, MOVISTAR… are already betting on this new reality.

Brands from many different sectors have understood that their presence in the metaverse is essential and the use of their emblematic distinctive signs is also projected into the metaverse and the new virtual environments.

However, the distinctive signs already used (and to be used) in the metaverse are protected, registered, and maintained in the physical and tangible world we all know. They are subject to the same principles of registrability, territoriality and specialty that apply in the real world. The acquisition of rights on trademarks still happens outside the metaverse, even if these are used in this new virtual environment.

It is essential to consider this legal reality, since the acquisition of exclusive rights over trademarks is still undeniable located outside the metaverse, so it will be the National Industrial Property Offices (SPTO in Spain, USPTO in the USA, INPI in France, INPI in Portugal, UIBM in Italy, …) or supranational (EUIPO), the stakeholders actually granting or rejecting trademarks, both for outside and inside the metaverse purposes.

In this sense, trademark rights owners in the real world should take some preventive actions to adequately project the protection of their trademarks onto these new virtual environments inside the metaverse.

We will now focus our attention on two specific preventive actions.

1) Firstly, reviewing the classes and specific wordings of the goods and services of your trademark registrations.

In the current Nice Classification of Goods and Services (International Classification) there is not a single class covering ‘metaverse’. Not a single mention. But this is not strange. Nor is there a single heading that acts as an umbrella to protect all merchandising products, even though the ripple effect of many brands has been spreading to merchandising for decades.

Therefore, the first job which trademark managers should undertake is to review their portfolios to complete their distinctive signs’ scope of protection.

Such an addition to the protection may lead to the need to register some trademarks in new classes which may have not been contemplated back when they were filed. An example could be the registration of the sign in class 9 including wording for “downloadable virtual goods” and for “goods to be used online and in virtual worlds”.

It may also be the case that trademark owners realize that while their trademark registrations already cover the right class, their current wording does not specifically cover the services to be provided in the virtual world. This is the case, for example, of the following classes:

  • In class 35, although many trademarks are already sufficiently protected, in principle, as follows: ‘retailing services via global computer networks relating to [the product in question]’, the fact is that those trademarks where the wording of services in class 35 does not provide for this possibility should have their protection extended by a wording that adequately covers it.
  • In class 36 for financial transaction services of economic virtual currency using cryptocurrencies, cryptocurrency wallet management services, electronic payment processing services using cryptocurrencies.In Class 41 to cover online education services through virtual communities; entertainment, leisure and show business services in virtual environments.
  • In Class 44 to cover remote medical consultation services through virtual environments.
  • In Class 45 for the provision of legal services in virtual environments.

This effort to review each class and wording, and improve trademark protection where necessary, is already being carried out by leading brands such as NIKE, CONVERSE, L’OREAL, among others, which have recently filed new trademark applications to improve their protection and adapt them to metaverses and the new virtual realities.

To cite some examples, the following applications were recently filed by NIKE INNOVATE CV at the EUIPO:

  • A 18586664 NIKE, in Classes 9, 35 and 41.
  • A18586667 JUST DO IT, in Classes 9, 35 and 41.
  • A 18586672 JORDAN, in Classes 9, 35 and 41.
  • A 18605923 NIKELAND, in Classes 9, 25, 35, 41 and 42.
  • A 18642776 SNKRS, in Classes 9, 35, 41 and 42

2) A second preventive action to be taken by portfolio owners is to rethink their trademark portfolio surveillance strategies, to act against new conflictive applications. In other words, they should extend their surveillance services to new trademark applications (to be informed and be able to take opposition or challenge decisions against new applications by third parties for trademarks identical or similar to their own) that include classes or services which were not interesting or necessary to monitor before, but that, given the new paradigm, need to be taken into account now. However, it is now advisable to extend the surveillance to class 9 in order to detect identical or similar marks applied for “computer programs with clothing for use online and in virtual online worlds”, for example.

In any case, the catalogue of preventive actions to be taken must be in line with the company’s strategy in terms of its presence in metaverses, so that each brand may require different complementary actions to optimize its protection in the real world that will be projected, and exploited, in the virtual world.

5/5 - (3 votes)

Jorge Lorenzo

Lawyer.Barcelona Office Director.Barcelona Legal Department Director.

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