New Nice classification: trademarks related to virtual goods in the metaverse and NFT finally protected

Author: D.ssa Giovanna Del Bene

On 1 January 2023, the 12th edition of the Nice Classification came into force.

This is an internationally recognized system, established following the Nice Conference in 1957, revised in Stockholm in 1967 and Geneva in 1977, and amended in 1979, which is used for the classification of goods and services for trademark applications. Currently, the Nice Classification consists of 45 classes (34 classes of goods and 11 classes of services). Each class contains a list of terms that define the scope of protection of the goods or services to be protected through trademark registration.

Every year, the Committee of Experts on the Nice Classification updates the classification according to market and user needs.

In this respect, the 12th edition was particularly eagerly awaited by professionals and trademark owners, as it introduces important novelties concerning the way trademarks are protected in the metaverse regarding virtual goods and the use of NFTs, which until now were not expressly provided for in the Nice Classification.

NFTs (acronym for Non-Fungible Token) are certificates registered on blockchain, which represent the deed of ownership and the attestation of authenticity and uniqueness of a digital asset (they are therefore not interchangeable).

The term METAVERSO originated in Neal Stephenson’s 1992 science fiction novel Snow Crash as a combination of the terms ‘meta’ (from Aristotle’s ‘Metaphysics’) and ‘universe’. Recent years have seen a strong development of the metaverse due to the advancement of virtual reality technology and many companies, such as Microsoft and Facebook, are investing in this parallel market. The metaverse is a virtual reality projected onto the web and shared simultaneously by several people. These are shared three-dimensional spaces (so they are not owned by companies) where users move freely (with their own identity or using avatars), performing social and commercial activities. Access to the metaverse is through registration on a computer platform that can be accessed simply through a computer and an Internet connection. The use of visors or augmented reality devices is recommended to enhance the experience. Purchases can be either real or virtual (via crypto assets).

This new digital reality has proved to be an opportunity for major brands and companies in general, so much so that there has been an increasing number of trademark applications containing terms related to the metaverse, virtual goods and non-fungible tokens (NFT). This has made it necessary for Trademark Offices to provide guidance to users on the classification of these new types of terms.

In recent months the EUIPO (European Union Intellectual Property Office) and the USPTO (United States Patent and Trademark Office) have provided some guidance for the classification of these terms pending the entry into force of the new edition of the Nice Classification.

According to the EUIPO’s approach:

– Virtual products fall under Class 9 because they are treated as digital content or images. However, lacking clarity and precision per se, the term virtual goods needs to be further specified by clarifying the content to which these virtual goods refer (e.g. downloadable virtual goods, or virtual clothing).

– The term NFT is to be considered ‘new’ and for the Office, the term non-fungible tokens per se is not acceptable. NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital elements while remaining distinct from them, and it will be necessary to indicate the type of digital element that NFTs authenticate.

– Services related to virtual products and NFTs will be classified in line with established classification principles for services.

The USPTO has provided the following guidance in relation to the identification of virtual goods and services in the relevant classes:

Class 9: downloadable virtual goods, i.e. computer programs containing footwear, clothing, sports equipment, art, toys and accessories for use online in online virtual worlds.

Class 35: retail shop services of virtual goods, namely footwear, clothing, sports equipment, art, toys and accessories for use online in online virtual worlds; online retail shop services of virtual goods, namely footwear, clothing, sports equipment, art, toys and accessories for use online in online virtual worlds

Class 41: Entertainment services, i.e. virtual footwear that cannot be downloaded online, clothing, sports equipment, art, toys and accessories for use in virtual worlds created for entertainment purposes.

Below are some of the new features introduced with the 12th edition of the Nice Classification:

Class 9 incorporates the term “downloadable digital files authenticated by non-fungible tokens (NFTs)”, as well as “downloadable computer software for handling crypto assets’ transactions using blockchain technology” and “downloadable cryptographic keys for receiving and spending crypto assets” and also “virtual reality viewers” and “virtual keyboard projection devices”.

Class 36 includes ‘transactions involving cryptocurrencies’;

Class 41 includes ‘provision of online virtual tours’;

Class 42 covers “mining of crypto assets” and the “provision of virtual computer systems via the cloud”.

In light of the above, it is always advisable to consider extending the protection of one’s trademarks to virtual and NFT-related goods and/or services and to the presence in the metaverse, so as to be able to take advantage of the opportunities offered by this new market with greater serenity, avoiding fraudulent activities by third parties.

© THINX Srl  – January 2023