New Nice Classification: Trademarks related to virtual goods in the metaverse and NFT finally protected - Lexology

On 1 January 2023, the 12th variation of the Nice Classification came into force.

This is an internationally recognized system, established pursuing the Nice Conference successful 1957, revised successful Stockholm successful 1967 and Geneva successful 1977, and amended successful 1979, which is utilized for the classification of goods and services for trademark applications. Currently, the Nice Classification consists of 45 classes (34 classes of goods and 11 classes of services). Each people contains a database of presumption that specify the scope of extortion of the goods oregon services to beryllium protected done trademark registration.

Every year, the Committee of Experts connected the Nice Classification updates the classification according to marketplace and idiosyncratic needs.

In this respect, the 12th variation was peculiarly eagerly awaited by professionals and trademark owners, arsenic it introduces important novelties concerning the mode trademarks are protected successful the metaverse regarding virtual goods and the usage of NFTs, which until present were not expressly provided for successful the Nice Classification.

NFTs (acronym for Non-Fungible Token) are certificates registered connected blockchain, which correspond the deed of ownership and the attestation of authenticity and uniqueness of a integer plus (they are truthful not interchangeable).

The word METAVERSO originated successful Neal Stephenson’s 1992 subject fabrication caller Snow Crash arsenic a operation of the presumption ‘meta’ (from Aristotle’s ‘Metaphysics’) and ‘universe’. Recent years person seen a beardown improvement of the metaverse owed to the advancement of virtual world exertion and galore companies, specified arsenic Microsoft and Facebook, are investing successful this parallel market. The metaverse is simply a virtual world projected onto the web and shared simultaneously by respective people. These are shared three-dimensional spaces (so they are not owned by companies) wherever users determination freely (with their ain individuality oregon utilizing avatars), performing societal and commercialized activities. Access to the metaverse is done registration connected a machine level that tin beryllium accessed simply done a machine and an Internet connection. The usage of visors oregon augmented world devices is recommended to heighten the experience. Purchases tin beryllium either existent oregon virtual (via crypto assets).

This caller integer world has proved to beryllium an accidental for large brands and companies successful general, truthful overmuch truthful that determination has been an expanding fig of trademark applications containing presumption related to the metaverse, virtual goods and non-fungible tokens (NFT). This has made it indispensable for Trademark Offices to supply guidance to users connected the classification of these caller types of terms.

In caller months the EUIPO (European Union Intellectual Property Office) and the USPTO (United States Patent and Trademark Office) person provided immoderate guidance for the classification of these presumption pending the introduction into unit of the caller variation of the Nice Classification.

According to the EUIPO’s approach:

– Virtual products autumn nether Class 9 due to the fact that they are treated arsenic integer contented oregon images. However, lacking clarity and precision per se, the word virtual goods needs to beryllium further specified by clarifying the contented to which these virtual goods notation (e.g. downloadable virtual goods, oregon virtual clothing).

– The word NFT is to beryllium considered ‘new’ and for the Office, the word non-fungible tokens per se is not acceptable. NFTs are treated arsenic unsocial integer certificates registered successful a blockchain, which authenticate integer elements portion remaining chiseled from them, and it volition beryllium indispensable to bespeak the benignant of integer constituent that NFTs authenticate.

– Services related to virtual products and NFTs volition beryllium classified successful enactment with established classification principles for services.

The USPTO has provided the pursuing guidance successful narration to the recognition of virtual goods and services successful the applicable classes:

Class 9: downloadable virtual goods, i.e. machine programs containing footwear, clothing, sports equipment, art, toys and accessories for usage online successful online virtual worlds.

Class 35: retail store services of virtual goods, namely footwear, clothing, sports equipment, art, toys and accessories for usage online successful online virtual worlds; online retail store services of virtual goods, namely footwear, clothing, sports equipment, art, toys and accessories for usage online successful online virtual worlds

Class 41: Entertainment services, i.e. virtual footwear that cannot beryllium downloaded online, clothing, sports equipment, art, toys and accessories for usage successful virtual worlds created for amusement purposes.

Below are immoderate of the caller features introduced with the 12th variation of the Nice Classification:

– Class 9 incorporates the word “downloadable integer files authenticated by non-fungible tokens (NFTs)”, arsenic good arsenic “downloadable machine bundle for handling crypto assets’ transactions utilizing blockchain technology” and “downloadable cryptographic keys for receiving and spending crypto assets” and besides “virtual world viewers” and “virtual keyboard projection devices”.

– Class 36 includes ‘transactions involving cryptocurrencies’;

– Class 41 includes ‘provision of online virtual tours’;

– Class 42 covers “mining of crypto assets” and the “provision of virtual machine systems via the cloud”.

In airy of the above, it is ever advisable to see extending the extortion of one’s trademarks to virtual and NFT-related goods and/or services and to the beingness successful the metaverse, truthful arsenic to beryllium capable to instrumentality vantage of the opportunities offered by this caller marketplace with greater serenity, avoiding fraudulent activities by 3rd parties.