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Australia | Publication | November 2023
Digital technologies such as the metaverse, non-fungible tokens (NFTs), blockchain and augmented realities are directly influencing how we cultivate and protect various forms of intellectual property, including trade marks.
We have previously written about key steps for brand owners to consider for their trade mark strategy in the metaverse and since then, earlier this year, the 12th edition of the Nice Classification came into force. The Nice Classification is a globally recognised system used to classify trade mark registrations across 92 countries, including Australia.
In the latest edition, the Committee of Experts made several amendments to the classification, including adding express references to virtual goods and services. For example, class 9 now includes references to ‘downloadable digital files authenticated by [NFTs]’ and even ‘humanoid robots with artificial intelligence for preparing beverages’ (which may seem like a niche area of interest, but has already been utilised by Kendall Jenner, who used a robot mixologist to promote her tequila brand!).
The new edition led many IP offices around the world, including the European Union Intellectual Property Office (EUIPO), the United Kingdom Intellectual Property Office and United States Patent and Trademark Office to issue guidance on the trade mark classification of emerging technologies.
In August, IP Australia released its own guidance on ‘Virtual goods, metaverse, NFTs, and blockchain’ (Guidance). The Guidance and recent developments of the Nice Classification demonstrate how brands can enhance their digital footprint and protect their trade marks in the virtual world.
The Guidance breaks down IP Australia’s position for registering trade marks in respect of the following emerging technologies:
In practice, the registration of virtual goods and services is proving to be complex, as illustrated recently by the EUIPO’s partial refusal of Burberry’s attempt to register a range of virtual products, including its iconic tartan plaid print. In an attempt to ensure we enter the metaverse in style, the luxury fashion brand tried to register its iconic figure mark for goods including ‘non-fungible tokens (NFTs)’, ‘downloadable interactive characters, avatars and skins’ and ‘virtual bags’. However, the EUIPO held that the mark lacked distinctiveness, noting that the assessment of the distinctive character of the mark should be based on the same principles applicable to three-dimensional (i.e. physical) marks.
Issues of infringement in this space are also complex. It remains unclear in Australia whether physical goods and in-person services will be considered the same as or similar to their virtual counterparts for the purposes of trade mark infringement. This very issue has already come up overseas:
While Australian authorities are yet to deal directly with these issues, overseas developments should serve as cautionary tales for brand owners about the challenges in the registration and use of virtual brands – even in cases where a brand, such as Burberry, has existing registrations in respect of parallel ‘real world’ goods and services.
The Guidance offers helpful direction, but what does it ultimately mean for brand owners? Following the publication of the Guidance, we have expanded our recommendations on what steps brand owners should be taking in their trade mark strategies:
Protection & enforcement | Infringement & risk management |
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