Metaverset and trademarks – new world, same rules? – Intellectual property

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In October 2021, Meta shared a video on YouTube titled “The Metaverse and How We’ll Build It Together – Connect 2021”.1 Around this time, the company also announced its rebranding from Facebook to Meta.2 The company’s new name apparently means it’s focused on building the meta-verse. In that video, Mark Zuckerberg refers to “an embodied internet” and basically explains that Metaverse is about creating a greater experience and presence in the virtual world, as opposed to just staring at a screen. Although the meta-verse and its dynamics are currently still a new concept for many of us, it is extremely relevant right now. Although it is in its stages of development, the rapid and growing emergence of the metaverse is a reality.

The rapid development of the meta-verse, and the attendant challenges and opportunities, have already been demonstrated in the field of intellectual property. While the development of the meta-verse raises special and unprecedented questions in the context of intellectual property in the broadest sense, it also generates great enthusiasm within trademark law.

Metaverse essentially provides existing and potential traders with a new trading platform. As a result, to catch the wave early, several merchants have already responded by submitting trademarks for goods and services to be traded in the metaverse. From the website of the United States Patent and Trademark Office, it is clear that many trademarks related to goods and services that are intended to be used and enjoyed in the metaverse have been filed in recent months and weeks. Many well-known global brands have led or followed suit, including, among other, Nike, Clinique, Gucci, McDonald’s and Red Bull. From the South African Trademark Register, it appears that Meta has filed various relevant trademarks, namely – “Meta”, “Meta Portal” and “Meta Quest”.

As the development of goods and services for use and enjoyment in the metaverse grows ever greater, it is expected that more trademarks, for use in connection with such goods and services, will be registered in the foreseeable future. From the beginning, the registration of product and service marks in Metaverse raises the question: do the normal trademark rules apply? In short, and for now, the answer is essentially yes.

In the future, however, attitudes may change. In this context, with regard to the area in which trademark applications are to be filed, a new approach may need to be considered. As a general rule, trademarks must be registered in the area in which they must be Used. But since Metaverse is so global, the lines seem blurred and one might consider filing trademarks in the area where the consumer of the virtual goods or services is located. located. Either way, as different metavers will eventually enter the virtual world, the question that arises is what steps can metavers take to circumvent trademark infringement? Ideally, a metaverse should take action and be able to request, for example, proof of registration of a trademark to be used in connection with goods and services to be traded in the virtual world. Metaverses can even go so far as to create a virtual trademark register for that metaverse and require trademark protection in that metaverse before allowing a merchant to trade in those goods or services in that metaverse. Unlikely, perhaps, but not impossible?

In terms of classification, trademarks are generally registered in the classes to which goods and services of interest are assigned, according to the Nice classification. Accordingly, the precise nature of the goods and services associated with the metaverse will be the basis for the classification. In this context, the classification of service marks is apparently simpler than the classification of product marks. International trends seem to suggest that service marks should at least be registered in Class 09, which covers “Virtual downloadable goods or services, namely computer programs for use in virtual online worlds.and Class 41, comprehensive “entertainment services, namely the provision of virtual goods or services online for use in virtual environments created for entertainment”.

The classification of virtual goods intended only for use in the meta-verse is currently more complex. Will a mark intended only for use with products in the metaverse be registered only in class 09 or, moreover, in the class in which the physical product is to be registered? In addition, the protection of existing brands for goods such as belongs to Class 25, which covers “Clothes” Only, will it be enough to prevent other merchants from using the same brand, or a confusingly similar brand, in connection with virtual clothing in the metaverse? In the light of the blurred lines that justify considering in this context the addition of a new class, specifically dedicated to virtual goods, to the Nice classification. However, if the Nice classification is not extended to specifically accommodate virtual goods intended for the metaverse, the most prudent approach at present will be for trademark owners to ensure that they do not only provide trademark protection in the classes they are. usually interested in, covering the particular goods they are normally interested in, but also in Class 09. This will of course help trademark owners to prevent other traders from ‘Using the trademark owner’s mark in Metaverset in connection with virtual goods.

The emergence of the metaverse requires vigilance and insight from existing and potential traders. Nevertheless, it will be more ideal for traders to jump on the bandwagon of the metaverse instead of missing out on an opportunity to gain or retain competitive advantage.

Footnotes

1 meta 2021 https://youtu.be/PEuVYs9qLpM.

2 meta 2021 Introducing Meta – YouTube.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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