The number of trademark applications containing the words “NFT” or “METAVERSE” in the list of goods and services has skyrocketed. Last year (2021) there were just over 200 EU trademark applications containing “metaverse”, “NFT” or “non-fungible token” in the list of goods and services. This year, the figure will be close to 2000.
Applicants on this bandwagon include companies and personalities such as Burberry, Gene Simmons, Red Bull, Levi Strauss, Johnson & Johnson, eBay. Also, “virtual goods” (whether backed by NFTs or not) are on the rise from virtual smoothies (Capri Sun) and virtual alcoholic drinks (Havana Club) to virtual pet food (Mars) and virtual clothing (Tommy Hilfiger).
Faced with this surge, the EUIPO has issued some practice tips on how to properly identify NFTs and metaverse products and services in a trademark application. Here’s the gist of them:
– All downloadable virtual goods belong to class 9. However, the term “virtual goods” is not sufficiently precise in itself and must be specified. An example of an acceptable term would be “downloadable virtual goods, namely virtual clothing and cosmetics”.
– NFTs are considered as digital certificates that authenticate digital items but are distinct from the items they authenticate. If NFTs are used in the list of goods and services, they must be specified as to what they authenticate. For example, “downloadable digital art, authenticated by an NFT”. On a side note, this example by the EUIPO seems a little bit odd, because the “product” there is not the NFT, but digital art. NFT merely describes what kind of digital art is in question. A better example would’ve been “non-fungible tokens authenticating digital art”. Here the “product” is the non-fungible token, not the item it authenticates.
– Services relating to virtual goods, NFTs and the metaverse are classified as other services.
One aspect that is not covered by the new practice tips is whether virtual services are covered within the scope of “normal” services. Virtual goods are separate from physical goods and are even in a different class. For services the classification is different. Also, the distinction between virtual services and physical services is not clear-cut. You could have a virtual restaurant serving virtual food or a virtual restaurant serving actual food (through delivery service). A virtual restaurant serving actual food is basically like a “normal” restaurant service. The execution might be different, but in the end, the customer receives actual food. In this sense, a virtual restaurant is a fancy version of a restaurant website where the customer can order food to be delivered.
To illustrate, McDonald’s recently filed an EU trademark application in class 43 for “operating a virtual restaurant offering actual food and beverages; operating a virtual restaurant featuring actual home delivery”. As said, this was classified in class 43, like “normal” restaurant services.
The same application also covered “operating a virtual restaurant offering virtual food, beverages and goods; operating a virtual restaurant featuring virtual home delivery”. This was classified in class 41, presumably falling under the umbrella of pastime or entertainment services.
NFTs, metaverse, virtual goods and services will continue to be an increasingly important part of branding and trademarks. Brand owners should keep a close eye on how trademark law adopts into this new world in the coming years.