EUIPO Updates Guidelines for NFT and Virtual Goods Trademark Applications

The metaverse increases the permeability of boundaries between different digital environments and the physical world. People can imagine themselves walking into a space where they interact with virtual objects through real-time information in real life. This is a huge step forward in technology and has created countless business opportunities. But how should people protect their brands and intellectual property in this new world?

Considering the protection afforded by different intellectual property rights, trademarks may be the one that attracts the most attention and presents the latest opportunity for businesses to obtain commercial benefits. Many world-renowned brands have applied to register their trademarks for use in the virtual world and through non-fungible tokens (NFT). From fashion brands such as Louis Vuitton, Gucci, Valentino, Nike and Adidas to fast food suppliers such as KFC and McDonald’s, many brands have Ready for the use of its iconic trademark in the metaverse world.

NFT are essentially digital assets powered by blockchain technology. An NFT is a unique, indivisible token, typically associated with an item (collectible item, digital artwork, or in-game asset) that uses blockchain technology to record ownership and verify authenticity.

Protecting brands through the trademarking of NFT and virtual goods is not only effective in the metaverse realm, but is also very practical in new technologies and digital content trends in general. Recently, French luxury brand Hermès filed a lawsuit against a digital artist, alleging that the images he created for the MetaBirkin NFT collection infringed Hermès’ copyright.

Brands will gain new opportunities in the metaverse, and there will be new demands for brand protection.

EUIPO Guidelines on NFTand Virtual Goods

In response to the sudden increase in trademark applications containing terms related to virtual goods and NFT, the European Union Intellectual Property Office (EUIPO), which is responsible for EU trademark registration, has published guidelines on the classification of virtual goods and NFT. The approach is included in the 2023 draft guideline “Main reference point for users of the EUIPO system”.

EUIPO defines NFTas “unique digital certificates registered in the blockchain for the verification of digital items, but not identical to these digital items”.

Virtual goods and NFT fall under category 9 of the Nice Classification, EUIPO said. This is because they are considered digital content or images. Class 9 mainly includes instruments and meters for scientific or research purposes, audio-visual and information technology equipment, and safety and life-saving equipment. Services related to such goods will be classified in accordance with existing practice.

Both the terms “virtual goods” and “NFT” are themselves unacceptable when filing with the EUIPO. Instead, the content of items related to virtual goods must be specific (eg “virtual goods, virtual clothing”). For NFT, the digital items verified by the NFT must also be specific. In the 12th edition of the Nice Classification to be released in 2023, the term “downloadable digital files verified by NFT” will be added to category 9.

The growing number of these types of applications shows that NFT are a valuable tool for brand recognition and access to intellectual property protection. It is critical for brands how their trademarks will be protected and controlled in the metaverse and online in the future. The EUIPO’s guidelines provide clearer rules for applicants seeking such protection.