How virtual goods and NFTs to be classified in trademark applications – the EUIPO’s position

With the development of the Metaverse infrastructure (a virtual space that wants to replicate the real world) and the advent of all sorts of new business opportunities, many companies start to consider trademark protection for the so-called virtual goods and services. They represent NFT ( non-fungible tokens ) blockchain records that can be purchased by consumers in the Metaverse.

For example, Nike has filed trademark applications for virtual clothes and shoes, McDonald’s for virtual food and burgers, etc. The goal is based on such protection no one else to sell similar NFTs using trademarks from the real world. Bear in mind that one trademark is protected only for the goods and services mentioned in its applications and so far virtual goods haven’t been included in the list as a whole.

From that perspective, one important issue has arisen – how such virtual goods or services to be classified under the Nice Classification that does not cover them now. Many Patent Offices have started to receive trademark applications and ask applicants for more clarifications because virtual goods can mean many different things.

In the light of this the EUIPO has issued its current position on that topic, stating the following:

• Virtual goods are proper to Class 9 because they are treated as digital content or images. However, the term virtual goods on its own lack clarity and precision so must be further specified by stating the content to which the virtual goods relate (e.g. downloadable virtual goods, namely, virtual clothing).
• The 12th Edition of the Nice Classification will incorporate the term downloadable digital files authenticated by non-fungible tokens in Class 9. NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital items but are distinct from those digital items. For the Office, the term non fungible tokens on its own is not acceptable. The type of digital item authenticated by the NFT must be specified.
• Services relating to virtual goods and NFTs will be classified in line with the established principles of classification for services.
• The Office’s approach is set out in the 2023 draft Guidelines on which a range of stakeholders have until 3 October this year to comment.