[Author: Xinyan Liu]

In recent years, “metaverse” is a trending topic in the high-tech field. On October 28, 2021, the famous social media company “Facebook” officially announced its change of name to “Meta” and vowed to stake all its future to the virtual reality business. Subsequently, more and more companies are investing or extending their business to the "metaverse" field. As one of the most important business assets in the "Metaverse" world, the trademark protection is becoming more and more important. How should we protect trademark rights in the era of "metaverse"? Based on examples of trademark use in "metaverse", the authors would like to share their opinions on the choice of goods/ services of trademark applications.

1. What is the Metaverse?

"Metaverse" is a virtual world of digital living space with a new social system that is connected and created by scientific and technological means, reflected, and interacted with the real world1. To a certain extent, we can simply regard the "metaverse" as a "virtual world". However, unlike virtual image transactions like "QQ Show" appeared in China long-time ago, "metaverse" relies on blockchain technology that enables each virtual goods to have a unique digital certificate. Beyond the protection of digital copyrights, the technology enables reliability of distribution, purchase, and collection of virtual goods. After being encrypted by digital means, each virtual goods will have a unique "digital certificate", which will be permanently stored on the chain and can be traced back. Such virtual goods cannot be falsified or copied. As a result, the virtual commodity trade brought by the "metaverse" has already become part of the real economy.

2. How trademarks are used in the metaverse?

In 2021, the well-known luxury fashion brand "Gucci" opened a virtual "Gucci Garden" on the world's largest multiplayer online game platform "Roblox" for two weeks. The garden was a replica of the real museum “Gucci Garden” at Plazza della Signoria 10, Florence, Italy. In the virtual world, “Gucci Garden” had exhibition halls, bookstores, boutique houses, restaurants, etc. After entering the virtual space, visitors would be transformed into a neutral virtual human character with no age or gender. During the visit, different sequences of visits made the virtual human character retain different spatial segments. At the end of the tour, each virtual human would have a unique look. 2

This year, "Gucci" continues its cooperation with "Roblox" by opening a permanent "Gucci Town". In this virtual town, the "Gucci" mark and its logo are everywhere.

After entering the "Gucci Town", virtual characters can participate in various themed games, create unique artworks, visit exhibition spaces, buy virtual clothes for collection or game wears, and join in party activities. 3 It was reported that one of the digital "Gucci" bag was sold for over $4,000, much higher than the price of a real “Gucci” bag.

In the post-pandemic era, many fashion brands have begun to bring their products into the metaverse virtual world. In March 2022, the virtual reality platform DECENTRALAND held a virtual fashion live show named "Metaverse Fashion Week", which attracted more than 60 fashion brands including HUGO BOSS, Jacob & Co, Tommy Hilfiger, and ETRO etc. 4

Besides fashion shows, Metaverse Fashion Week also had virtual stores, parties, virtual clothing try-on, and other activities, and adopted a "see now, buy now" format. Parts of clothes in the catwalk show will be sold in stores. The virtual fashion show makes consumers choose their time and place to watch and purchase the products more freely, just like the popular "live-streaming sales" in China. In the virtual world, people are more likely to have access to brands. What’s more, in the metaverse era, consumers can purchase virtual goods directly in the virtual world.

3. Trademark registration applications in the metaverse perspective

Usually, the goods designated by fashion brands involve class 3 (cosmetics, perfumes), class 9 (glasses, sunglasses), class 14 (necklaces, jewelry, watches), class 18 (Valises, bags, umbrellas), and class 25 (clothing, shoes, hats, socks), etc. In the metaverse perspective, all the "Gucci" products are in the form of virtual goods, which may have similar appearance and image as the physical goods, but are completely different in function, sales channels, and use. Consumers can see the "Gucci" trademarks in the virtual world, get in touch with virtual goods, and even buy "Gucci" virtual bags, etc. So does such use of "Gucci" trademark on “virtual bags” belongs to class 18? When an IP dispute appears, is it possible for Gucci to claim rights based on its trademark registered on bags, etc. in Class 18? According to the Chinese official guideline Classification of Similar Goods and Services, virtual goods and physical goods are not deemed similar. Therefore, in the current legal practice, it is difficult for the prior trademark holders to claim their rights and interests based on the trademark registered on physical goods. When the trademarks protected on physical goods are put into use in the "metaverse" virtual reality, the registrant may find that its brands have been squatted by a third party and registered in classes that are related to the virtual goods. When the same trademarks registered on virtual goods and physical goods co-exist in the "metaverse" world and real work but actually belong to different owners, it will surely damage the interests of the real brand owner.

In addition, virtual business world and real business world are not isolated "parallel universes", but an organic whole closely connected and complementing with each other. Business activities in the virtual world help to enhance consumers’ awareness of brands and provide a better shopping experience, thus becoming a brand-new way for publicity and promotion. Trademark rights on the "metaverse" related goods and services will help develop new businesses in the "metaverse" era.

So how should we file trademark registration applications on the "metaverse" related goods and services? Let's take a look at the latest registration application filed by Gucci with EUIPO on June 15, 2022. The specified goods/services of the application are listed in the blow chart5:

Based on the above, the trademark application for "Gucci" designated class 9 (downloadable virtual goods), class 35 (online retail of virtual goods), class 36 (financial services), class 41 (providing online non-downloadable virtual goods), class 42 (authentication of digital certificates), etc. Taking the above-mentioned trademark use of “Gucci” in the "metaverse" perspective into consideration, it is easy to conclude that this European “Gucci” application intends to expand the trademark protection of “Gucci” to the virtual world beyond its original protection scope:

The selection of trademark classes for “metaverse” field is very different from that on physical goods. Some goods in class 9 and related service classes that are not often designated for trademarks used on physical goods have become the core classes that must be selected for “virtual goods”.

Unlike EUIPO, "virtual goods" is not fully accepted by the CNIPA. Moreover, in practice, items in the official guideline Classification of Similar Goods and Services and the official "Pre-approval List of Goods and Services" are preferred by the CNIPA when it examines a new trademark application. If the specifications of goods and services are deemed not standard, they will be required for modification in the Office Action. Therefore, we cannot directly adopt the same list of goods and services of the European trademark application to a trademark application in China. However, to a certain extent, applicants can still choose from acceptable items of goods and services to protect their trademark rights in "metaverse" era in China. For example, when filing a new trademark application in China, the applicant may designate the following relevant items of related goods and services:

4. Conclusion

With the arrival of the "metaverse" era, virtual goods and space have become more and more common in life and have become a new field for all industries to expand their market. For newly emerged things, there is always a certain lag in the legislation. Therefore, the author suggests entities have their own trademarks registered in the relevant classes, before entering the "metaverse" world to expand the protection scope of their brand and be prepared for the new opportunities and challenges.

Source:

1. "Peking University Scholars Release START Map of Metaverse Characteristics and Properties " https://share.gmw.cn/it/2021-11/19/content_35323118.htm

2. Tencent's "Integrating shopping, entertainment, and social interaction, the ever-existing virtual Gucci town officially opened in Roblox !”

https://new.qq.com/omn/20220611/20220611A0550000.html

3. Home of Watches "The grand opening of Gucci Town, embark on a journey of the Metaverse, and explore a new location in the digital field"

https://baijiahao.baidu.com/s?id=1734512928888099220&wfr=spider&for=pc

4. Sina Finance "Metaverse Fashion Week" is coming, will you buy it? 》https://baijiahao.baidu.com/s?id=1736111955809630673&wfr=spider&for=pc

5. Global Brand Database