It is common knowledge that the Metaverse is the upcoming revolution in the digital world, and that it will constitute a challenge in many areas of law, specially in the area of Intellectual Property.
Virtual worlds are nothing new but, unlike what happens with video games, the Metaverse does not seek to be a fantasy world, but an alternative reality. The Metaverse, still in its rudiments, is a 3D virtual world, accessed through specific devices that allow total immersion, to the point where we are expected to be able to carry out the functions we perform in the physical world (e.g., make a transaction with a financial institution, attend an art exhibition, go shopping, etc.).
Non-fungible tokens (NFT’s) are authenticated digital works that are bought and sold, just as they are in the physical world. As a result of the blockchain authentication, NFT’s generate secure economies in the Metaverse.
Thereby, both the NFT’s and the virtual products are the exchange currency in the Metaverse.
As a result, the European Union Intellectual Property Office (EUIPO) has experienced an increase in the number of applications it receives containing terms related to virtual goods and NFT’s.
We finally have a number of guidelines and recommendations from the EUIPO regarding the protection of a trademark owner’s virtual goods.
Having analyzed the EUIPO criteria and guidelines, we briefly describe our recommendations in this regard:
1. EXTEND THE PROTECTION
In the event that you consider the possibility of entering the Metaverse, it is highly advisable to extend your trademark’s protection to safeguard your economic activity within the virtual world. In this regard, Class 9 is of particular relevance insofar virtual goods and non-fungible tokens are treated as digital content. However, even if the Nice Classification incorporates the term “downloadable digital files authenticated by non fungible tokens”, the content of the virtual product must be specified in detail. The Office does not accept the term “non-fungible tokens” with no further description.
2. ESTABLISH THE ASSIGNMENT/LICENSING AGREEMENT FRAMEWORK
A strategy should be established, if required, to set the relevant framework in relation to the company’s assignment and/or licensing arrangements given that, as the case may be, it will host or exclude the brand in the Metaverse.
3. REVIEW THE SCOPE OF SURVEILLANCE
Review the scope of the trademark’s surveillance, in order identify the trademarks that may constitute an obstacle to the company’s in the Metaverse.
At Ingenias we are fully aware that this new digital advance poses new challenges for legal advice in this area. That is why we have the appropriate professionals and extensive experience in trademark law to properly advise our clients in this matter.
If you are considering extending the protection of your trademarks, please send us back this email and we will analyze the best way to adjust or adapt your rights to you potential new needs.