Brands to the Metaverse and Beyond! Part 1…

Is 2022 the year of the Metaverse? It would certainly seem so. By 'Metaverse', we mean an immersive and interactive online world (think Ready Player One). This is to be distinguished from the internet as we currently know it. Arguably, the digital worlds offered by games such as Fortnite, Second Life, and World of Warcraft are forms of ‘Proto-Metaverse’.

Interest in the term (coined by Neal Stephenson in his novel Snow Crash) spiked after Facebook announced its rebrand to Meta last year, and that buzz has only continued to grow. We’ve had Decentraland’s ‘Metaverse Fashion Week’, where attendees could buy wearable NFTs (Non Fungible Tokens, non-interchangeable digital assets stored on a blockchain), PrettyLittleThing’s first virtual model (launched to a mixed reaction), and the entry of Shiba Inu coin ('SHIB' – an alternative to Dogecoin) into the Metaverse.

Brands are taking advantage of the increased consumer engagement by launching projects such as Nike’s Nikeland and Balenciaga’s ‘Afterworld’. Adidas and Prada recently launched Adidas : Prada, Re-Source, a collaborative NFT art project. Online presence has never been more important.

So, what about brand protection in this unchartered territory? As the first instalment into this ‘deep dive’, this Kat takes a look at filing practices surrounding the new buzz. Later instalments will look at enforcement in the Metaverse and other salient developments.

With new ‘territory’ comes the possibility of a land grab. Could the Metaverse be the new ‘Wild West’ of trade marks, bringing with it problems of trade mark squatters? Certainly in the US, there have been a few opportunistic filings so far. For instance, individuals have filed applications covering downloadable virtual goods for the following:

1. US Application No. 97112054 PRADA.

2. US Application No. 97112038 GUCCI.

It appears as if the proprietors of these applications are not affiliated with Prada or Gucci.

Moving on to the EU and searching for goods and services like “downloadable virtual goods” filed since 1st January 2022 on the EU register disclosed, as of 2nd May 2022, 340 results. Here is a select sample for your perusal:

1. McDonald’s has filed applications for McDONALD’s, MCCAFE, and its M Logo covering, among other things, “[v]irtual food and beverage products” in Class 9 and “[o]perating a virtual restaurant featuring actual food and beverages” in Class 43 (see here, here and here).

2. Puma has filed applications for its PUMA and Leaping Logos covering, among other things, “[d]ownloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys, and accessories for use online and in online virtual worlds” in Class 9 (see here and here).

3. Crocs has filed an application for CROCS covering, among other things, “[r]etail store services and online retail services featuring virtual goods...” in Class 35 and “[d]ownloadable virtual goods created with blockchain-based software technology and smart contracts, in the nature of footwear, clothing, bags, accessories and charms for decorating footwear, clothing, bags and accessories” in Class 9 (see here).

4. L’Oréal has filed applications for KERASTASE, L’ORÉAL PROFESSIONNEL (logo), and KIEHL’S covering, among other things, “[d]ownloadable virtual goods, namely, computer programs in relation to perfumery, toiletries, cosmetics, make-up, skincare preparations, body care preparations and face care preparations, hair care preparations and hair color preparations for use online and in online virtual worlds” in Class 9 and “[e]ntertainment services, namely, providing on-line, non-downloadable virtual perfumery, toiletries, cosmetics, make-up, skincare preparations…” in Class 41 (see here, here, and here).

5. Charlotte Tilbury has filed applications for CHARLOTTE’S MAGIC and CHARLOTTE TILBURY covering, among other things, “[d]ownloadable virtual goods for use online and in online virtual worlds...[d]ownloadable virtual goods, namely, computer programs in relation to perfumery, toiletries, cosmetics, make-up, skincare preparations, hair care preparations and hair color preparations for use online and in online virtual worlds” in Class 9 (see here and here).

6. ITV has filed an application for LOVE ISLAND WORLD covering, among other things, “downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, swimwear, bags, art, toys, games, cosmetics, toiletries, perfumes, water bottles and towels for use online and in online virtual worlds” in Class 9, “operating online marketplaces relating to the purchase and sales of non-fungible tokens (NFTs) and other blockchain-based non-fungible valuables” in Class 35, and “[e]ntertainment services provided within the metaverse, namely the provision of online, non-downloadable virtual footwear, clothing, headwear, eyewear, swimwear, bags, art, toys, games, cosmetics, toiletries, perfumes, water bottles and towels, digital animated and non-animated designs and characters, avatars, digital overlays, and skins for use in virtual environments” in Class 41 (see here).

7. Heineken has filed an application for a figurative version of its HEINEKEN SILVER beer (see below) covering, among other things, “[d]ownloadable virtual goods for use online and in online virtual worlds; tokens [software]; non-fungible tokens (NFT's); application tokens” in Class 9 (see here).

8. Fédération de la Haute Couture et de la Mode (the governing body for the French fashion industry) has filed an application for PARIS FASHION WEEK covering, among other things, “[d]ownloadable virtual goods for use in virtual computer environments, namely clothing, Shoes, headgear, Clothing for gentlemen, ladies and children, fashion items…” in Class 9, “[o]rganization of fashion shows for promotional purposes, Including within virtual computer universes (metaverse)” in Class 35 and “[a]rranging of competitions relating to education or entertainment which may be provided online and/or within virtual computer worlds (metaverses)” in Class 41 (see here).

9. ESRT Empire State Building, L.L.C. has filed a figurative application for an image of the Empire State Building (see below) covering, among other things “non-fungible tokens (NFTs)” and “downloadable multimedia files containing artwork authenticated by non-fungible tokens (NFTs)” in Class 9 (see here).

The sheer number of ‘Metaverse-related’ filings already present on the register indicates that brands are determined to secure their protection early. Certainly, for more established brands, opposition/invalidation by way of reputation/unregistered rights might offer assistance even if their existing trade marks are deemed to cover dissimilar goods/services to “downloadable virtual goods” (for instance). However, this necessarily entails a high evidential burden and costs. As such, it is much better to be the first to file (and register). "You snooze you lose" (although this Kat does like snoozing in a nice sunny patch…)!

So, for the moment, we wait to see how filings continue to develop and how the wording in those new specifications is eventually tested before courts and tribunals to determine the relevant scope of protection (but more on that later). If the wording granted by courts and tribunals is narrow/if the wording is not accepted at all, then this could leave proprietors with limited protection while the classification system catches up with commercial developments.

Picture on top middle is by Riana Harvey, who grants permission for its use.

Pictures in the lower middle are in the public domain.