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Metaverse and trademark registration for use in the virtual environment: "Should I register my trademark 'in' Metaverse"?

By Kamille Trindade Machado and Dr. Milton Lucídio Leão Barcellos
17/02/2022

The intellectual property legal system has been constantly challenged over the past decade by disruptive technologies that insert intellectual property rights holders and society as a whole into a new environment of personal, professional and commercial relationships[1]. The creation of the Metaverse represents one of these important challenges and requires increasingly rapid and assertive positioning of intellectual property rights holders and, specifically for the purpose of this brief text, of the holders of trademark registrations.

One of the frequently asked questions is "Should I register my brand in the Metaverse"? First, it is important to emphasize that there is no trademark registration in the Metaverse, but rather trademark registration that covers its use with clear object and precise purpose for its proper protection in the environment of the incipient and growing virtual society of the Metaverse. But there are nationally and internationally registered trademarks, which have product/service/trade classification and specifications and must be revised to provide for their exploitation in the virtual environment. For example, the international classification of products and services for trademark registration purposes in Brazil and abroad already provides for "Virtual currency exchange operations" (class 36), "virtual office rental" (class 35 – auxiliary list), "advice, consulting and consumer information on products and their prices, through websites, in connection with internet commerce" (class 35 – auxiliary list), "internet space leasing" (class 38 – auxiliary list), among other services already provided[2].

In the specific case of the Metaverse environment, there is still no adequate specification provided for in the International Classification (main and auxiliary list), so trademark applicants for this purpose of use must use the "free specification" field with corresponding additional federal fee payment.

For example, brands from major companies like Nike, Walmart, Crocs, Jay-Z, McDonalds, among others, were registered in the U.S. using the specifications mentioning "virtual products and services", "creation and sale of virtual products", "products and services in virtual environments" [3], among other free specifications, using as main classes 09, 35 and 41[4]:

Another initiative of trademark owners is to create specific trademarks for the virtual environment, as was the case with NIKELAND[5], which must also be protected via the national and international trademark registration system:

It is concluded that trademark owners must review their registrations and verify that they are effectively properly protected nationally and internationally for this new immersive, collective and hyper-realistic virtual environment, which already demonstrates a clear opportunity to expand the business in various sectors of products, services and commerce, being certain that various technical, legal and regulatory challenges should arise and will be better faced by those who have preventive initiatives and proactive in the new inviting virtual environment.

 

By Kamille Trindade Machado – Lawyer and Head of the Department of Trademarks, Copyrights and Contracts of Leão Intellectual Property, Master in Intellectual Property and Technology Transfer for Innovation by PROFNIT/IFRS, Postgraduate in Business Law from The Getúlio Vargas Foundation - FGV. E-mail: Kamille.machado@leao.adv.br.

and Milton Lucídio Leão Barcellos Lawyer and Agent of Industrial Property, partner of Leão Intellectual Property, Master and PhD in Law from PUCRS, Specialist in International Law by UFRGS, guest professor in Brazil and abroad in the area of intellectual property and innovation, author of books and articles in the area of intellectual property, reviewer and official expert in the area of intellectual property since 2003. E-mail: Milton.lucidio@leao.adv.br.

 

 

[1] An example: https://forbes.com.br/principal/2019/01/6-maiores-desafios-atuais-da-tecnologia/

[2] See International Classification of Products and Services Brands available at: https://www.gov.br/inpi/pt-br/servicos/marcas/classificacao-marcas

[3] See recent text published in the February 11, 2022 online issue of The National Law Review: https://www.natlawreview.com/article/trademarks-metaverse-brand-protection-virtual-goods-services

[4] See Text by Amanda Liu "Trademark Protection in the Metaverse", published on February 1, 2022 that points out how the main classes to be used classes 09 (virtual products susceptible to download, such as computer programs containing footwear, clothing, headgear, glasses, bags, backpacks, sports equipment, art, toys and accessories, for use online and in online virtual worlds), 35 (Department stores featuring virtual products such as footwear, clothing, headgear, glasses, backpacks, bags, sports equipment, art, toys and accessories, for online use and online store services featuring virtual goods such as footwear, clothing, headgear, glasses, backpacks, suitcases, sports equipment, art, toys and accessories) and 41 (entertainment services, specifically footwear, clothing, headgear, glasses, suitcases, backpacks, sports equipment, art, toys and virtual accessories online and not susceptible to download for use in virtual environments). Available in: https://www.lexology.com/library/detail.aspx?g=1be3918e-e0d1-48f0-99da-0b2d113987a2

[5] See: https://news.nike.com/news/five-things-to-know-roblox

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