EUIPO sets out guidelines for trade marks relating to virtual goods and NFTs

As noted by GuestKat Becky Knott in her earlier post (here), brand owners have been very active in protecting their brands through attempts to secure trade mark registrations in response to the rise of the Metaverse.  In recent months, this Kat has been seeing a lot of discussions on filing strategies (in particular classification and specification drafting), particularly in the US and the EU, and on the oriental side in China and Japan. 

The European Intellectual Property Office (EUIPO) has recently issued some guidance notes on its approach to classifying items relating to virtual goods and non-fungible tokens (NFTs).  In particular, it is noted that:-

• Virtual goods and NFTs fall under Class 9.  Services relating to such goods will be classified in line with current practice.
• The EUIPO defines NFTs as “unique digital certificates registered in a blockchain, which authenticate digital items but as distinct from those digital items” (as emphasized by the EUIPO).
• The items “virtual goods” and “non-fungible tokens” are both unacceptable on their own.  The phrase “virtual goods” has to be further specified by stating the content to which the virtual goods relate, whereas the type of digital item authenticated by the NFT must be also specified.  

The EUIPO’s approach does not come as a surprise as the precision required is necessary to identify the scope of protection sought, and is also in line with the longstanding teachings (now codified in the EU Trade Mark Regulation) of the 2002 decision of the Court of Justice of the European Union in Sieckmann. All this said, brand owners may find it helpful, as a matter of practice that the EUIPO seeks to come up with a definition of NFT in the midst of many different versions of the same.    

With trade mark registrations covering virtual goods and NFTs possibly secured for the time-being, here comes a more complicated and controversial issue - enforcement of such rights.  If Katfriends are aware of any interesting case development and insights, this Kat would be delighted to spend some quality time reading up on these issues.     

The look on this Kat having gone through client's proposed specifications.