Trade mark protection for ‘METAVERSE’?

The Metaverse is supposed to be the next big thing. More and more companies test its potential and open offices and stores in the Metaverse. The impact of this development on trade marks and other IP rights has been discussed by fellow Kats here, here and here. But what about protection of the term ‘Metaverse’ as a trade mark? The Second Board of Appeal of EUIPO dealt with this question for the first time in two recent decisions concerning the trade marks METAVERSE FOOD (R2357/2022-2) and METAVERSE DRINK (R2356/2022-2).

Background

On 11 February 2022, the Polish company Oshee Polska filed EU trade mark applications for-- 

• METAVERSE FOOD covering pharmaceutical preparations, various nutritional supplements as well as foodstuffs and drinks in classes 5, 29, 30 and 32;
• METAVERSE DRINK for various drinks in class 32. 

EUIPO rejected the applications, reasoning that they lacked distinctiveness. The applicant appealed, arguing that the applications referred not to virtual goods but to physical goods in the real world. The applicant also pointed out that the EUIPO had registered its other applications, no. 018652720 ‘Metaverse ENERGY’ and no. 018652723, for goods in classes 5 and 32.

Decisions of the Board of Appeal

The Board of Appeal dismissed the appeals. It held that the term ‘METAVERSE’ refers to a virtual space. The signs had the meaning ‘food in a virtual space’ and ‘drink in a virtual space’.

The Board of Appeal rejected the applicant’s argument that the Metaverse is limited to a specific virtual world where people interact with each other as avatars in a three-dimensional space that mimics reality. According to the Board of Appeal, the Metaverse is not only avatars, alternative reality and virtual products. It is also another version of e-commerce.

Companies use the virtual world to promote their physical goods and associated trade marks in order to increase product sales in the real world. The Board referred to various Internet articles to support its finding, including articles on Lindt’s first virtual US store [here and here], where Lindt’s chocolate products can be ordered.

On that basis, the Board of Appeal found that the marks will be understood as indications that the goods are offered or can be purchased in a virtual space. ‘METAVERSE FOOD’ and ‘METAVERSE DRINK’ will not be perceived as an indication of commercial origin but only as information of a general nature about the goods in question.

As regards other EU trade marks consisting of, or containing the term ‘METAVERSE’, the Board of Appeal conceded that EUIPO’s practice may be inconsistent. However, a potential error made in other application proceedings does not grant an applicant a right to the registration of a sign that is non-distinctive.

Comment

These decisions of the Board of Appeal allow the conclusion that the term ‘Metaverse’ is as descriptive and non-distinctive as the term ‘Internet’. Both words only refer to an online space, be it a three-dimensional virtual world or a more ‘traditional website’. As such, they lack distinctiveness with respect to goods and services that can be offered and sold online. The term ‘Metaverse’, like the word ‘Internet’, cannot be monopolized for one single entity.

Nevertheless, the EUIPO has registered various trade marks consisting of, or containing ‘Metaverse’, such as Metaverse for backpacks and other goods in class 18, and Metaverse Studio for goods and services in classes 9, 35, 38 and 41, including ‘recorded content’ and ‘production of radio and television programmes’. Applying the reasoning of the Board of Appeal to these and similar trade marks means that they should be considered non-distinctive.

Given this, one wonders whether these inconsistencies will be resolved in favour of the position that the term "Metaverse" will uniformly be deemed to lack distinctiveness.

Picture is by Nataliya Vaitkevich and is used under licensing terms of Pexels.