Trademarks in the Metaverse – Trademark

World Intellectual Property Day is celebrated on April 26 and, this year, with the theme chosen by the World Intellectual Property Organization (WIPO): “IP and Youth: Innovating for a Better Future”. The relationship between young people and intellectual property has at least two directions. In a sense, young people are innovating and gaining protection through intellectual property. In another, young people are the main recipients of innovations protected by intellectual property. It is mainly in this sense of relationship that the subtheme of marks in the metaverse is located.

What is the Metaverse?

The coining of the term “metaverse” is generally credited to Neal Stephenson, who may have first used it in his science fiction novel Snow Crash, and the result of mixing the words “meta” and “universe” . It is the metaverse, a universe that is beyond something. This something is the non-digital world, therefore this universe is digital.

But if the metaverse was any digital space, all digital spaces would be covered by the concept, including any messaging service or online store. If the metaverse is a universe, then it has the ability to replace the other universe, the non-digital one. Therefore, the metaverse must be considered as a digital space in which it is possible to practice all (or almost) the activities that it is possible to practice in the non-digital universe. The metaverse, with this definition, does not yet exist. However, the near realities already do this.

The main examples are virtual realities such as Second Life, in which the user can do various activities, through their representation, the avatar. In this virtual reality, it is for example possible to buy, among other digital goods, animals, art, vehicles and clothing for the avatar.

Virtual real estate is also now a reality. In 2021, the value of digital land purchases, in places like Sandbox, Decentraland, Cryptovoxels and Somnium, exceeded US$500 million, and many of these buyers engaged architectural services to build their virtual properties and purchased furniture and digital artwork to decorate it.

Other examples of approaches to the metaverse, where the greatest number of users are mostly young, are games like World of Warcraft, Fortnite, and Roblox. Together, these virtual spaces currently have around 450 million users. If they were a country, they would be the third in the world in terms of population. Given this fact and since it is possible to sell goods and provide services in these digital spaces, many entities are interested in exercising their freedom of economic initiative in these spaces. To do this, entities needed signs that allowed consumers to distinguish their products and services from those of other entities. In other words, these entities must use brands.

Marks in the “metaverse”

The use of trademarks in these digital spaces leads to new legal situations. How can an entity protect its brand in these spaces? Can an entity that already holds a trademark registration use it, without risk, in these spaces, and can it prevent third parties from using it? The answer to these and other questions results from existing legislation, including the terms and conditions that users agree to when using these platforms and which may, in time, provide their own mechanisms to act against infringements. .

The answer to the first question, in Portugal and in most countries of the European Union, is clear. Any entity that intends to have an exclusive right to use a certain mark must register it, since the right to a mark, in these jurisdictions, results from registration. The law is applicable to all of the aforementioned approaches to the metaverse, as it is to any digital space. While it is illegal to sell products with another entity’s trademark in an online store, so is selling those products in any virtual reality.

It is also a question of whether an entity that already holds a trademark registration will be able to use it, without risk, in these spaces, and whether it will be able to prevent third parties from using it. For example, will a trademark registered to identify clothing be protected against its use by users of these spaces to identify virtual clothing? The answer, in principle, is negative. The trademark right resulting from the registration is limited to the goods and services covered by the registration and similar. If a trademark is registered for clothing, its protection should not cover virtual clothing, which is not clothing or a similar product, but a digital good. However, the answer may be different if the mark in question has the legal status of a renowned mark. For these marks, the law provides that their protection is not limited to the goods and services covered by the registration, and the owner may prevent their use in connection with other goods and services, provided that with their use, the third party seeks to take unfair advantage of the distinctive character or reputation of the mark or could harm them.

The owner of a trademark without notoriety status, like the vast majority, intending to exploit it in these new spaces, must obtain a new registration relating to digital goods or services.

It is already happening. The American NIKE, although being a brand with well-known status, and therefore having less need to do so, intending to sell virtual products, filed, last year, the registration of several NIKE trademarks to identify, among other , “virtual downloadable goods” products, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, gym bags, backpacks, athletic equipment, artwork ‘art, toys and accessories for use online and in online virtual worlds’ and the services ‘Retail store services relating to goods, namely shoes, clothing, headgear, eyeglasses, sports bags, handbags spine, sports equipment, art, toys and accessories for online use. Nike also sought registration from NIKELAND to identify, among other things, “virtual reality and interactive game services provided online from a global computer network and through various wireless networks and electronic devices”, which are currently used to identify sports and virtual games. space in the aforementioned Roblox game.

The future

The growth of these realities that are approximations of the metaverse, over the past two years, will have been driven by the pandemic. If physical spaces were limited, virtual spaces benefited. However, economic agents must take precautions and properly protect their brands when obtaining registrations for virtual goods and services. Despite the end of the pandemic, the trend should be for the continued growth of virtual spaces. In the last year, among others, in addition to Nike, Hyundai and Gucci were also present in Roblox and several technology companies have invested in areas related to the metaverse, such as Facebook, which is now, because of this, Meta.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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