EU Trademarks in virtual environments: latest developments and next challenges

As a trademark attorney in Australia and New Zealand, I'm fascinated by the evolving trademark landscape and eager to learn from other jurisdictions to offer my clients the best advice.

So, this week, I attended "EU Trademarks in Virtual Environments: latest developments and next challenges," a talk at the EU IP Office hosted by experts Thom Clark and Pierluigi M. VILLANI, both from the legal department of the EUIPO.

They shared insights on trademark protection in virtual environments. Here are key takeaways:

1. Class 9 Holds the Key

 All digital content, including virtual goods, currently falls under Class 9. This broad categorization emphasizes the growing importance of digital assets in the trademark landscape.

2. NFTs: Guardians of Authenticity

 NFT ownership doesn't directly grant trademark rights. Instead, NFTs act as digital certificates of authenticity for the underlying physical or digital items they represent.

3. Service Classification:

Real-World Impact Rules: Service trademarks within virtual environments are classified based on their tangible impacts in the real world. This ensures alignment with existing trademark principles.

4. Metaverse: A Market with Many Facets:

 The metaverse encompasses a diverse range of industries and experiences. This complexity necessitates a nuanced approach to trademark protection within this burgeoning space.

5. Novelty in the Metaverse: 

Facts surrounding the metaverse are rapidly evolving and often lack widespread consumer recognition. Therefore, establishing distinctiveness can be challenging.

6. Evidence Rules in Dispute Resolution:

 When comparing virtual and real-world goods during inter-part proceedings, the EU IP Office prioritizes evidence and arguments presented by the parties.

7. Use it or Lose it in the Virtual Realm:

 Advertising and offering virtual goods or services within relevant territories can constitute legitimate use of an EUTM. However, mere digital representations used solely to promote real-world goods will not suffice.

These insights offer valuable guidance for businesses navigating the increasingly complex world of virtual trademarks. Understanding these nuances can help businesses protect their brands and maximize their opportunities within the metaverse and beyond in the EU.

Big thanks to EUIPO - European Union Intellectual Property Office for the insightful webinar! Note: This is information for reference purposes only and not legal advice.

If you need assistance with trademark registration, please contact Ngan at the email address: ngan.tran@maygusttrademarks.com.au or connect on  LinkedIn or Facebook.