Matthias Rößler - 1. March 2023

Metaverse and NFTs

Metaverse refers to a 3D virtual space that can bring new and innovative opportunities for companies and their product marketing.

In this online world, customers can act as digitally animated avatars and shop for digital clothing, shoes and accessories, for example. Using VR glasses or augmented reality, people control their metaverse avatars with their own movements.

NFTs (non-fungible tokens) play a central role here. NFTs are virtual certificates for shares in digital objects or works. They are used to secure the digital goods in the blockchain and certify their authenticity and ownership. More information on Trademark law and NFTs in our February 2022 blog.

Trademark protection in the metaverse

It is to be expected that new business models will develop in the area of virtual goods in the next few years and that trademark law will thus also gain in importance in the digital environment. Trademark applicants should protect their business model as broadly as possible under trademark law in order to protect themselves from imitators.

In order to be able to ensure trademark protection for digital products, it can be an interesting option to register trademarks for virtual goods and NFTs. Our specialists will be happy to advise you on this.

Documents of use in the grace period

To meet the rights-preserving requirements of trademark law, the trademark owner must introduce and use the registered trademark - within 5 years from registration - on the market. Otherwise, the trademark protection may lapse.

If the application for a virtual trademark is not followed by any use of it in the virtual space, the trademark application may accordingly become ready for cancellation.

For more information on proof of use during the grace period, see our article: Proof of use of a registered trademark.

Supervision of third party trademark applications

Due to the decentralized nature of the metaverse and the fact that it is not yet possible to foresee how this virtual market will develop, there is also a risk of trademark infringement for trademark owners in this market.

For example, there have been recent disputes by prominent companies in U.S. courts. Nike, a sporting goods manufacturer, sued a metaverse marketplace that offered sports shoe images as NFTs. Hermès sued an artist who sold digital artwork of a Hermès product through an NFT marketplace.

Trademark monitoring of virtual goods and NFTs is therefore advisable, because it makes it possible to take timely action if it becomes apparent that there is a significant risk of confusion with the registered trademark.

European Union Intellectual Property Office (EUIPO)

According to the EUIPO, applications for virtual products and NFTs have been filed mainly in classes 9, 18 or 25 ("downloadable software / virtual goods" and "non-fungible tokens") or for the services, such as online stores for virtual products (classes 35, 41 or 42).

According to the EUIPO opinion, services related to virtual goods and NFT should be classified according to the established principles for the classification of services. [Source]

Regarding Matthias Rößler:

Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.

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Design protection: European design vs. US design patent
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IP Due Diligence
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The monitoring of registered trademarks
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Transfes and assignment of intellectual property rights
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