Securing trademark protection in the metaverse

4 minute read
24 May 2023

The guide below provides some useful information on acceptable descriptions of metaverse-related goods and services in Canada, China, the United States (U.S.), The United Arab Emirates (U.A.E.), the European Union (EU), the UK and Singapore.

Virtual reality, once considered fringe, has entered the mainstream narrative as interest increases and the concept of a metaverse, defined partly by the interconnectivity of various virtual worlds, materializes. Perhaps guided by past interactions with the adoption of the modern internet or an exploration of future interactions, brands are taking note. Whether in an effort to reach new consumers or to engage with consumers in a novel way, several major brands have developed new product lines, hosted virtual showrooms, or created limited-edition offerings, among other creative endeavours, not bound by the confines of the physical world.

While some brands have been proactive, others have had to consider defensive options. For example, a U.S. lawsuit by Hermès against unauthorized "MetaBirkin" NFTs in defence of its iconic Birkin brand is proving instructive with respect to the unexpected ways an infringement can occur in the virtual space. Meanwhile, unauthorised trademark applications for Gucci and Prada house marks were recently filed (and rejected) in the U.S. (serial numbers: 97/112,038 and 97/112,054). These applications in association with "downloadable virtual goods" featured clothing, headwear, eyewear and other goods that may be offered under the house marks in real life. These unauthorised applications were rejected, in part, because of existing registrations and prior pending applications by Gucci and Prada that cover retail store services and real world goods that are either consistent with or encompass the "narrower" retail services featuring virtual goods. For both applications, the fame of the fashion brands was also a factor in deciding against the unauthorised applications. Not all marks can benefit from being so well-known so as to elicit a ready rejection and may require additional maneuvering.

Given the emergence of virtual worlds and the metaverse, brand owners may wish to assess their own trademark portfolios with a view to expanding coverage to encompass this developing space. Virtual worlds permit the movement of digital goods themselves, and trademarks designed for real life goods may not necessarily extend to those digital worlds, depending on their application. In addition to considering potential enforcement mechanisms in the metaverse, brands can consider a proactive approach, with a view to creating protection strategies and potential language for filing trademark applications with respect to virtual worlds and digital elements.

As more creative metaverse-related uses emerge, goods and services will continue to be defined, more guidance will be issued, and the list of acceptable terms should further proliferate. In the meantime, we invite you to contact us for guidance in drafting potential new descriptions including, in some instances, strategizing with respect to populating the listing in the Canadian Manual of Goods and Services with proposed descriptions.

Descriptions of goods and services for the virtual/digital world field in:

This article was also authored by Denise Ee an associate working in the offices of JurisAsia LLC, with whom Gowling WLG has an exclusive association.

Should you have any questions or need more information on digital or virtual goods or metaverse-related trademark protection, please contact one of the authors or a Gowling WLG trademark professional.

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