Luxury fashion brand owners, such as Gucci, Louis Vuitton, and Balenciaga, were among the first to file trade mark applications for virtual products and services in both the UK and the EU. These brand owners sought protection for their trade marks in the context of virtual clothing, accessories, and other digital items offered in metaverse environments.
For example, Gucci filed applications for the trade mark protection of its brand in relation to "virtual products", including virtual clothing and accessories for avatars. There has been a growing trend of brand owners securing trade marks, not just for physical items, but for their virtual equivalents.
With more businesses offering virtual products that are digital representations of their real-world counterparts (and seeking trade mark protection for the same), questions about the applicability of traditional trade mark law begin to arise. For example, should a brand owner's trade mark for physical clothing extend to virtual clothing? And how should trade marks for real world services, such as entertainment or financial products, be handled in the virtual space?
In this final blog in the series, we consider the product and service classification guidance that has been issued by the UK and EU trade mark offices (the UKIPO and the EUIPO) and cover some of the key trade mark cases before the courts that focus on the intersection of virtual products and services with their real-world counterparts.
Classification guidance from the UKIPO and the EUIPO
Both the UKIPO and the EUIPO have issued guidance on how to protect products and services for use within the metaverse. It is clear from the guidance that irrespective of the type of goods they denote, specific virtual goods in essence consist of digital content, and are therefore proper to Class 9, and not to the class of the corresponding real-world goods. For instance, “virtual clothing” belongs to Class 9, and not to Class 25.
In terms of services, there is no reason, in principle, why a service capable of being delivered by virtual means cannot be delivered inside the metaverse. As such, the offices will accept services provided through the metaverse in the same class as more traditional forms of delivery. For example, both “education services" and “education services provided via the metaverse” belong to Class 41. It may not be possible to take the same approach for all metaverse services. In particular, the “provision of virtual food and drink” cannot be proper to Class 43. In the real world, these services do not nourish people as the food is specified as being virtual. Therefore, in this case, the “provision of virtual food and drink for entertainment purposes” would belong to Class 41.
The following cases demonstrate how the courts have assessed the potential overlap between products that exist in the real world and in the virtual space.
In this final blog in the series, we consider the product and service classification guidance that has been issued by the UK and EU trade mark offices (the UKIPO and the EUIPO) and cover some of the key trade mark cases before the courts that focus on the intersection of virtual products and services with their real-world counterparts.
Glashütter Uhrenbetrieb GmbH - Glashütte/Sa. vs. EUIPO
This case concerned an EU trade mark application for Glashütte ORIGINAL covering “downloadable virtual goods, namely watches, clocks, and their accessories, for use online or in online virtual worlds” in Class 9, as well as retail services and the provision of these virtual products in Classes 35 and 41, and the issue of distinctiveness.
The General Court noted that Glashütte is a German town reputed in the field of watchmaking. It also confirmed that "real" watches and "virtual" watches would be seen in the same way by consumers, despite their differing mediums (physical vs. digital). As the virtual watches at issue may represent the corresponding real watches or emulate their functions, the public will directly perceive the trade mark as a logical extension of the reputation of the town in relation to traditional watchmaking. Therefore, Glashütte ORIGINAL will merely be perceived as promotional information about the quality and authenticity of these products and services. This ruling reinforced the idea that the digital space and the physical space aren't entirely separate when it comes to brand recognition and consumer perception.
Hermès vs. MetaBirkins
In a high-profile US case, Hermès filed a lawsuit against artist Mason Rothschild over his creation of "MetaBirkins" - NFTs featuring digital representations of Hermès' iconic Birkin bags. Rothschild’s project took off in the virtual world, with the digital bags sold for significant amounts of money. Hermès claimed that Rothschild's NFTs misled consumers into thinking they were official products from Hermès, causing potential confusion and harm to its brand.
Hermès argued that the MetaBirkins were an infringement of its trade mark, as the bags closely resembled its real-world products and used its brand name in their promotion. Rothschild countered by defending his work as an art project, protected under freedom of expression, and pointed out that the bags weren’t physically real but existed only in the digital realm. The case highlighted the tension between digital art, trade mark law, and brand protection in the metaverse. It also set a precedent for how IP law might evolve in response to NFTs and other virtual products.
Juventus vs. Blockeras
In Italy, Juventus Football Club successfully obtained an injunction against Blockeras, an NFT producer, in relation to the unauthorised use of NFT playing cards featuring the former Juventus player, Christian Vieri, with a Juventus shirt and the club’s details.
The court found that although these products were different to those registered by Juventus (Juventus, like Hermes, had trade marks registered for physical goods), Juventus’s trade mark rights benefitted from broader protection because of their “well-known” status.
Conclusion
Trade mark disputes in the metaverse are just beginning to unfold, but the above cases illustrate the wide variety of challenges businesses face in protecting their IP in virtual environments. As the metaverse continues to expand, we can expect to see more litigation and legal developments, especially as both brand owners and consumers navigate the blurred lines between the digital and physical worlds. For brand owners venturing into the metaverse, it’s critical to stay ahead of these emerging challenges by adopting strategies for trade mark protection and collaborating with platform owners to ensure their IP remains secure in this dynamic and rapidly evolving space.
Please get in touch with our Trade Mark team if you would like our assistance with protecting, enforcing or commercialising your trade mark for the metaverse.
