The Nice classification system
The Nice Classification System is an international system used for the classification of goods and services during trademark registration. It divides goods and services into 45 classes, classes 1 to 34 for products and classes 35 to 45 for services.
The system helps simplify the trademark registration process by providing a harmonized way to categorize products and services across different countries and languages. The classification system used for trademark registration provides broad categories of goods and services. However, these categories may not be comprehensive enough, particularly in a rapidly evolving digital sector, where there may be uncertainty as to which category a particular product or service should be classified into, or how to formulate a brand specification in a given class of goods or services. goods or services. As a result, trademark applicants may lack clarity, and advice from IP offices may be helpful in providing direction.
NFT
The UKIPO defines an NFT as “a unique unit of data (the only one in existence of its type) that is linked to a work of digital art, music, video, etc. particular and which can be bought and sold.
It is important to remember that an NFT is a data token closely associated with the asset it represents, typically a digital asset. Its main objective is to mean possession of the asset, rather than the asset itself. Thus, the UKIPO and EUIPO agree that simply referring to a “non-fungible token” in a specification is not sufficient as a classification term – the type of digital asset it is associated with must also be specified .
The Nice Classification System already classifies “downloadable digital files authenticated by NFT” as Class 9. As such, assets such as digital art, downloadable graphics or software, and digital audio files authenticated by an NFT will enter class 9.
The EUIPO guidelines do not say more on the subject. However, the UKIPO rightly considers the possibility of NFTs being used not only in connection with digital assets, but also to authenticate real-world goods. In light of this, physical assets defined as being authenticated by NFTs will simply be accepted into their appropriate asset class. For example, a painting, whether authenticated by an NFT or not, will fall into class 16. Likewise, handbags will be classified into class 18, regardless of the NFT authentication.
A similar approach is taken with respect to services. Retail services relating to the sale of, for example, virtual clothing or digital art authenticated by NFTs, fall into the same class as retail services provided relating to real-world products (class 35) . The same goes for providing online marketplaces for buyers and sellers of goods and services authenticated by NFTs.
NFTs have also been used to demonstrate club membership or event access. Members of the (in)famous NFT brand “Bored Ape Yacht Club” often organize exclusive events for holders of their NFTs. Again, despite its digital aspect, club membership or entry to an event linked to an NFT would fall under Class 41 as an entertainment service.
Virtual goods
One of the challenges facing potential registrants is identifying the appropriate product class for virtual goods. Should applicants designate the equivalent physical product class, or use Class 9, which covers software and digital assets?
Interestingly, both offices appear to be of the opinion that the appropriate classification for all virtual goods, whatever they relate to, belong to class 9. Indeed, the goods to which they relate are essentially made up of data, such as digital images. The UKIPO gives examples of virtual handbags, clothing, accessories and shoes all falling within Class 9. These types of goods are quite similar in nature (i.e. they are all related to fashion) and further guidance is provided as to whether it is possible that a virtual good could fall outside of Class 9 would be helpful, but at the moment it appears that the position of the EUIPO and the UKIPO is that of the simplicity.
When it comes to drafting the specification, the UK and EU both agree that simply describing “virtual goods” as such lacks clarity and conciseness, same way that “goods” would not be an acceptable description of physical goods. To be accepted, these virtual goods must be clearly defined, for example “downloadable virtual clothing”.
Virtual Services
The UKIPO also gives its position on virtual services, including those provided in the Metaverse. The UKIPO has stated that video auctions and training or education services will be classified in Classes 35 and 41 respectively, whether they were provided in the Metaverse or otherwise. Indeed, regardless of where the services were provided, the function they perform remains the same.
However, according to the UKIPO, not all services can be treated the same, both inside and outside the metaverse. Take the example of Irish whiskey distiller Jameson, which recently filed a trademark application for virtual bars and restaurants offering virtual food and drinks. The UKIPO treats these activities differently because, although it is possible to order food and drink within the Metaverse for delivery or consumption in the physical world, a Metaverse avatar “consuming” food and beverages do not perform the same function and should therefore not be classified in the same way.
Accordingly, these types of non-equivalent services may be more appropriately classified as “entertainment services”, i.e. the provision of a simulation gaming service based on virtual reality or metaverse.
Regarding virtual services, the EUIPO stated rather ambiguously that these would be classified in accordance with “established principles of service classification”. In the absence of further clarification in the future, a cautious and pragmatic approach – namely filing all potentially relevant classes and being prepared to discuss with the examiner any objections or comments they may have – may be best. solution.
Conclusion
Protecting intellectual property in the virtual world continues to be a difficult landscape to navigate, from the initial step of protecting your intellectual property, to defending or filing lawsuits against those with whom it may There may be counterfeiting issues (for an example of the latter, see our recent update on the United States Hermes c. Rothschild NFT trademark dispute).
The guidance highlights that whether or not a brand plans to sell digital products in the Metaverse, it is important for brand owners to consider expanding their brand portfolio to incorporate virtual equivalents of their products. in class 9. on existing trademark registrations for physical goods is inadequate, for obvious reasons for brands that plan to sell products in the metaverse, but also for those who want to be able to properly enforce their rights against infringers unscrupulous who are considering selling digital versions of the brands merchandise.
When it comes to registering intellectual property, the UKIPO Guidelines give useful examples and pragmatic advice on how to describe the goods or services to which a possible trademark application relates. That said, there will undoubtedly be ambiguities in certain areas, particularly in an industry that is constantly evolving and innovating. Thus, a certain number of goods and services will always be evaluated on a case-by-case basis. With this in mind, trademark applicants should endeavor to be as clear and concise as possible in the terminology used to describe virtual goods and services in the trademark application.
The UKIPO makes it clear that it recognizes that these terms represent new types of goods and services in a rapidly changing technological landscape, and that it will likely endeavor to update its guidance periodically as further advances continue to emerge.
It will also be interesting to see whether the practices of the UKIPO and EUIPO diverge in this area, as the UK is no longer bound by the guidance and rules of the European Office. It may be necessary in the future for rights holders to adjust their approach to class selection, drafting specifications and enforcement litigation for different territories. It is therefore essential to stay abreast of these developments to ensure that intellectual property portfolios remain properly protected.
In Depth 2023-085
