Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
The Infinite Beauty of the Metaverse Calls for Proactive Trademark Protection
Hui XIAO Chinese Trademark Attorney Trademark Department Linda Liu & Partners
With Facebook renaming the company as “Meta” in 2021, “metaverse” became one of the hottest concepts in the capital markets and science and technology field. Various countries have formulated policies for industries related to “metaverse”, and well-known companies are also making attempts to apply the metaverse in various scenarios. The outbreak of the epidemic has greatly changed people’s work and lifestyle and quickly promoted the popularization of online shopping, remote work, video conferencing, distance education, etc. Not only have businesses accelerated digital transformation, but people’s adaptability to remote work and remote online communication has also increased. As the “metaverse” gradually becomes an pivotal economic space for new forms of communication, experience and games, enterprises are placing increasing emphasis on strategic positioning within the metaverse industry. How to protect trademarks in the limitless future of metaverse has naturally become a widely discussed topic. In this article, the author intends to explore the trademark registration and protection in the era of the metaverse by analyzing the latest policies and judicial precedents from various countries.
As you may be aware, the term “metaverse” originates from the science fiction novel Snow Crash written by Neil Stephenson in 1992, formed by the combination of “meta” (Greek, meaning “after or beyond”) and “verse” taken from “universe”. The protagonist of the novel, Hiro, is a hacker, and the cyberspace called “Metaverse” is his refuge from the real world, a virtual world born out of the real world, parallel to the real world, interacting with the real world, and always online. In the Oxford Dictionary, the “metaverse” is directly defined as a virtual reality space where users can communicate and interact with computer-generated environments and other individuals.
At present, the application scenarios of the metaverse in work, socializing, and entertainment are numerous and diverse. For example, GUCCI launched a permanent virtual world called “Gucci Town” at ROBLOX, where members can relax and socialize in cafes, purchase GUCCI digital items in GUCCI stores, and dress up as their virtual characters on the platform; PRADA not only launched a new virtual idol ambassador “Candy” for the Candy fragrance campaign, but also introduced a series of Time capsule NFTs (short for non-fungible tokens) to bring the advanced gameplay of pairing digital assets with physical rewards into the fashion metaverse. Seoul Mayor Oh Se-hoon announced a plan to build “Metaverse Seoul” in November 2021; ANA NEO announced in June 2023 that it will be the first in Asia to launch the virtual travel platform “ANA Granwhale”; In September 2023, China also just released the “Three-Year Action Plan for Innovative Development of the Metaverse Industry (2023-2025)”, outlining objectives such as “fostering leading enterprises and specialized small and medium-sized enterprises in the metaverse and building an industrial metaverse”. In short, the metaverse is gradually becoming integrated into various aspects of our work and life. As such, within the infinite beauty of metaverse, how can trademarks be protected?
Ⅰ. The status quo of application and protection of metaverse trademarks in various countries
Currently, there is ongoing debate on which classes should be used for the protection of goods or services in the metaverse, and whether there should be a determination of similarity between physical goods and virtual goods. Some countries have already issued relevant examination guidelines, while most countries are still actively engaged in discussions. Let’s take a look at the current status of application and protection of metaverse trademarks in various countries.
1. U.S.A.
As early as October 2021, Nike filed trademark applications with the United States Patent and Trademark Office (USPTO) for seven main trademarks, including “NIKE”, “JUST DO IT” and “Jumpman”. These applications have gained attention because their designated goods included “downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in online virtual worlds” and other metaverse-related goods and services.
On February 4, 2022, McDonald’s also filed a trademark application with the USPTO related to the metaverse, designating “online retail services featuring virtual goods”, “operating a virtual restaurant featuring physical and virtual goods, operating a virtual restaurant online featuring home delivery” and other related services, marking the latest company to apply for trademark registration for virtual goods and services in the metaverse world.
From the trademark applications of Nike and McDonald’s, it can be observed that the USPTO has accepted descriptions that include virtual goods or services, but there is a requirement to specify the specific content of the virtual goods or services.
By examining the results from the USPTO’s ID MANUAL (Classification of Similar Goods and Services in the United States), it is evident that there are already many descriptions that include virtual goods or services. For example:
Class
Term ID
Acceptable Descriptions
9
009-6292
Downloadable computer game software featuring virtual goods, namely, furniture, jewelry, sunglasses, etc. for use in online virtual worlds.
35
035-3225
Online retail store services rendered in a virtual environment featuring virtual goods, namely, furniture, for use in online virtual worlds.
42
042-2772
Computer programming of virtual goods for use in virtual worlds.
In addition, concerning the resolution of conflict between physical and virtual goods, the United States also contributed the “Hermès v. Rothschild” case, which is known as the “first case of the metaverse”1.
On February 8, 2023, the U.S. District Court for the Southern District of New York concluded the trademark infringement case of Hermès v. the artist Mason Rothschild. In this case, the court’s nine-member jury rejected the defendant’s defense that the “MetaBirkin” NFTs constituted artistic creations and was part of free speech protected by the First Amendment to the U.S. Constitution. The court held that the defendant’s infringing products were digital asset sold and assigned on the basis of the Hermès trademarks, and the defendant has gained profits and commissions therefrom, meeting the definition of commodity. In addition, the plaintiff submitted evidence that several fashion magazines (e.g., Elle and L'Officel) mistakenly portrayed the “MetaBirkin” NFTs as “Hermès entering the NFT market.” Social media users also expressed confusion, demonstrating actual confusion. Therefore, the “MetaBirkin” NFTs issued by the defendant constituted trademark infringement against the plaintiff Hermès, and it was ordered to pay the plaintiff a damage of USD 133,000.
In the author’s opinion, this case not only reflects the continuous exploration of the legal determination and supervision of NFT by the U.S. regulatory authorities and judicial practice, but also gives a reference precedent for similar cases. Moreover, this case has also prompted more brands to realize the value of intellectual property in the metaverse world.
According to the information disclosed by U.S. patent attorney Mike Kondoudis on Twitter2, on August 26, 2022, following the MetaBirkin case, Hermès filed multiple trademark applications with the USPTO related to NFTs, cryptocurrencies and the metaverse. The scope of the designations not only includes virtual, augmented, or mixed reality headsets; wearable computer peripherals for virtual reality computers; virtual reality glasses; hologram; a shirt equipped with sensors for a virtual reality computer; virtual reality gloves. It also covers retail store services featuring digital wearables; online marketplaces for buyers and sellers of virtual goods; and financial services, including the provision of electronic transfer of a virtual currency for use in connection with digital collectibles and NFTs.
The European Union Intellectual Property Office (EUIPO) also published updated guidelines on the classification of virtual goods and NFTs on June 23, 20225. In the guidelines, it is clarified that virtual goods fall under Class 9 of the Nice Classification, as they are considered digital content or images. Due to the inherent lack of clarity and specificity, the specification must be further clarified by stating what the virtual goods refer to (e.g., downloadable virtual goods, namely, virtual clothing). In addition, the term NFT is defined as “a unique digital certificate registered in a blockchain, which authenticates digital items but is distinct from those digital items”. For the EUIPO, the term “NFT” itself is unacceptable. It is required to specifically specify the type of digital item verified by the NFT.
In terms of infringement determination, a ruling made by the Court of Rome, Italy, on July 19, 20224, is also noteworthy. In this case, Juventus Football Club S.p.A. sued Blockeras S.r.l., alleging that Blockeras, in the production, sale, and online promotion of NFTs, used trademarks owned by Juventus, namely the "JUVE" and "JUVENTUS" wordmarks, as well as the figurative mark (a black and white striped shirt with two stars on the chest), constituting trademark infringement and unfair competition. In this case, the court held that Juventus had proved to be active in the crypto/blockchain games, considering the defendant as a competitor. In the end, the court concluded that the defendant’s actions in manufacturing and selling the NFTs infringed the plaintiff’s trademark and constituted unfair competition.
3. The U.K.
On April 3, 2023, the United Kingdom Intellectual Property Office (UKIPO) published a Practice Amendment Notice (PAN2/23) providing guidance on the classification of NFTs, virtual goods, and services within the metaverse5. Overall, the UKIPO’s new guidance align with the clarity requirements set by EUIPO. The key points of the guidance are as follows:
Grounds
Acceptable Specifications
NFT
NFTs will not be accepted as a classification term alone. It is required to clarify the contents authenticated by the NFTs.
Artwork, authenticated by NFTs [Class 16]; handbags, authenticated by NFTs [Class 18]; Training shoes, authenticated by NFTs [Class 25]; Retail services connected with the sale of [e.g. virtual clothing, digital art, audio files] authenticated by NFTs [Class 35]; Provision of online marketplaces for buyers and sellers of goods and service which are authenticated by NFTs [Class 35].
Virtual Goods
Virtual goods are classified in Class 9 of the Nice Classification system.
Downloadable virtual clothing, footwear, or headgear [Class 9].
Virtual Services
If a service is capable of being delivered via virtual means, IPO will continue to accept such services in the same class.
Education and training services delivered by virtual means [Class 41]; conducting interactive virtual auctions [Class 35].
Metaverse
There is no reason, in principle, why a service capable of being delivered by virtual means, such as video-conferencing, cannot be delivered inside the metaverse. As such, IPO will accept services provided through the metaverse in the same class as more traditional forms of delivery.
Education and training services provided via the metaverse [Class 41]; conducting interactive auctions via the metaverse [Class 35].
4. Australia
In August 2023, IP Australia also developed and published the New Guidance on Trademark Classification of Emerging Technologies 6. In this guidance, it is provided that virtual goods, defined as digital objects used in online virtual environments, are classified in Class 9. However, terms such as “virtual goods” or “downloadable goods” alone lack specificity and are not acceptable. Applications must specify the exact nature of the virtual goods (such as software, image files, music, or clothing). Acceptable examples include “downloadable virtual clothing”, “online retail services for downloadable virtual clothing”, “downloadable digital music files authenticated by non-fungible tokens (NFTs)”, etc. Regarding virtual services, the impact of the virtual service in the real world will be considered. For example, if a virtual restaurant in an online environment does not provide physical food but allows the avatar to consume virtual food, such restaurant services would be classified in Class 41 (Entertainment Services) rather than Class 43 (Restaurant Services). Similarly, travel simulations in a virtual environment that do not involve physical transportation would be categorized in Class 41 (Entertainment Services) rather than Class 39 (Transportation Services).
5. Korea
On July 14, 2022, the Korean Intellectual Property Office (KIPO) published the Guidelines for Examination of Virtual Goods 7. According to the guidelines, virtual goods are classified in Class 9 of the International Classification, but it is required to specify the specific goods as “virtual clothing, virtual shoes”, etc., namely, goods specification in the form of “virtual + real goods name” will be accepted. Additionally, a new similar group code “G5207XX” has been added for virtual goods. A clear criterion is also provided for determining the similarity of virtual and real goods. It states that although virtual goods include the name and main appearance of real goods, they are presumed to be dissimilar until relevant case precedents indicate otherwise, given that their actual usage situations differ.. However, guidelines also emphasized that in cases involving well-known or famous trademark that may cause a likelihood of confusion and misunderstanding between the source of virtual and real goods, Article 34(1)11 (Likelihood of Confusion) and Article 34(1)12 (Deception of Consumers) of the Korean Trademark Act shall apply. For facilitate understanding, KIPO also lists the following examples in the guidelines.
(1) Similarity between virtual goods
① In different similarity codes
② In the same similarity code
(2) Similarity between virtual goods and real goods
6. Japan
Japan has been actively seeking to support metaverse-related industries. As early as July 13, 2021, the Ministry of Economy, Trade and Industry (METI) released the “Research Report on the Future Possibilities and Challenges of the Virtual Space Industry”, actively exploring the issues and future development prospects facing the metaverse industry. Although the Japan Patent Office (JPO) has not yet issued formal guidelines for the classification of metaverse applications, it is actively studying the classification of metaverse applications. In practice, specifications that include virtual goods or services have already started to be accepted. For example, Nike’s trademark application No. 6724266 “NIKE and device” filed on October 25, 2021 was approved for registration on August 7, 2023. Its designated goods include “downloadable computer programs, computer programs (recorded), with the content of virtual goods, namely, shoes, sports shoes, clothing, hats, eyeglasses, bags, sports bags, backpacks, sports equipment, artworks, toys, personal items and accessories thereof for use in the online virtual world and online; Provide videos and images of non-downloadable virtual shoes, sports shoes, clothing, hats, eyeglasses, bags, sports bags, backpacks, sports equipment, artwork, toys, personal items and accessories thereof for use in the virtual space”, etc.
Judging from the content of Nike’s registered designated goods and services, Japan’s current approach is similar to that of Europe and the United States. Japan is open to descriptions containing virtual goods, but there is a requirement to specify the specific goods or services explicitly. Moreover, from the office action of amendment issued by the JPO examiner, the virtual goods are required to be very clearly defined.
June 27, 2023
The office action of amendment issued by the Examiner mentioned that: Class 41: “Provide non-downloadable data of virtual footwear, sports shoes, clothing, hats, eyeglasses, bags, sports bags, backpacks, sports equipment, artworks, toys, personal items and accessories thereof used in the virtual space” → It remains unclear what kind of data is being provided, so please modify the content of the data to a more explicit wording such as “image”.
In summary, in view of the guidelines provided by many countries, the author believes that many countries have reached a preliminary consensus on the classification of virtual goods in Class 9 of the Nice Classification. However, there is a requirement for specific details regarding virtual products, such as virtual clothing or virtual shoes. As for the classification of virtual services, the author aligns more with the approach outlined in the classification guidelines issued by IP Australia. This approach suggests that the classification of virtual services can be determined based on the impact of these services in the real world. For example, if an online virtual restaurant does not provide physical food but allows the user-controlled avatar to consume virtual food, it should be classified in Class 41 for entertainment services instead of Class 43 for restaurant services. For the determination of the similarity between virtual goods and real goods, the Korean Intellectual Property Office has given very clear examination criteria, explicitly stating that they should not be deemed as similar goods. At the same time, the office has put forward the idea that for trademarks with high reputation, a comprehensive assessment should be conducted based on whether there is a likelihood of causing confusion and misunderstanding among consumers, which is similar to the idea of broadening the protection of well-known trademarks. This approach closely resembles the reasoning in the Hermes v. Rothschild case and is expected to become an crucial reference for countries to formulate relevant standards.
Ⅱ. The current status of application and protection of metaverse trademarks in China
1. Status of trademark applications
(1) Subject matter of trademark applications
① Trademark Registrations including the word “metaverse”
According to the public information on the China National Intellectual Property Administration’s (CNIPA) online database, so far, the trademark applications in China related to metaverse can be roughly divided into the following three stages.
Before September 2021, that is, before Facebook changed its name to Meta, more than 20 applications containing metaverse, such as “多元宇宙 (Duo Yuan Yu Zhou – Multiverse in Chinese)” and “汉高元宇宙天空之城 (Han Gao Yuan Yu Zhou Tian Kong Zhi Cheng – Henkel Metaverse Sky City in Chinese)” were successfully approved for registration, and they remain valid to date.
After Facebook’s name change, everyone sensed the business opportunities of the metaverse. After September 2021, many well-known domestic enterprises rushed to filed a large number of applications for trademarks following the format “XX+ 元宇宙 (Yuan Yu Zhou – Metaverse in Chinese”. For example, Tencent filed “王者元宇宙 (Wang Zhe Yuan Yu Zhou - King Metaverse in Chinese)”, Alibaba filed “阿里元宇宙 (A Li Yuan Yu Zhou – Ali Metaverse in Chinese” and “淘宝元宇宙 (Tao Bao Yuan Yu Zhou - Taobao Metaverse in Chinese), ByteDance's affiliated company Beijing Xiaoniao filed “Pico元宇宙 (Pico Yuan Yu Zhou - Pico Metaverse in Chinese)”, NetEase filed “网易元宇宙 (Wang Yi Yuan Yu Zhou - NetEase Metaverse in Chinese)”, and so on. In addition, a certain trading company opportunistically filed more than 1,300 metaverse-related trademarks. It is reported that as of February 2022, the number of trademark applications in China containing the term “metaverse” was soared to 16,000, but the CNIPA has actively discouraged or rejected a large number of such applications. Officials from the CNIPA have stated that the metaverse is a new technology that should not be monopolized as a trademark by anyone, as it could lead to confusion. They strongly oppose and harshly crack down on malicious trademark registrations, such as those exploiting trends and hoarding without the purpose of use. In practice, the CNIPA has rejected applications like “头号元宇宙 (Tou Hao Yuan Yu Zhou – Top Metaverse in Chinese)” (Application No. 63475846) and “17 K元宇宙 (17 K Yuan Yu Zhou – 17 K Metaverse in Chinese)” (Application No. 59320904) , citing violations of Article 10(i)(7) of the Trademark Law, as “metaverse” is considered a new type of future digital technology that is likely to mislead consumers about the technical characteristics of goods or services. In addition, the trademark applications such as “元宇宙 (Yuan Yu Zhou – Metaverse in Chinese)” (Application No. 61415392) were rejected under Article 11(i)(2) of the Trademark Law, on the grounds that it “directly indicates thetechnical characteristics of the goods and makes it difficult to distinguish the source of the goods.
After the above-mentioned clear statement by the CNIPA, some companies have altered their application strategy. They no longer blindly filing applications in the format of “XX+ 元宇宙 (Yuan Yu Zhou – Metaverse in Chinese)” but instead are filing for more subtle trademarks, such as those containing suggestive terms such as “元 (Yuan – Meta in Chinese)”. For example, Huawei filed “城市元图 (Cheng Shi Yuan Tu - City Metamap in Chinese)”, “港口元图 (Gang Kou Yuan Tu - Port Metamap in Chinese)” and “元OS (Yuan OS – MetaOS in Chinese)” in Classes 9 and 42, Alibaba filed “元境 (Yuan Jing – MetaWorld in Chinese)” and “元境博域 (Yuan Jing Bo Yu – Meta World Broad Area in Chinese)” in Classes 9, 35, 38, 41, 42, etc. through its subsidiary Yuan Jing Sheng Sheng (Beijing) company, and Baidu filed “峙一元搜 (Zhi Yu Yuan Sou – Standing One/Top Meta Search in Chinese)” in Classes 9 and 42, etc.
② Companies that have already ventured into the metaverse are also beginning to tailor their own trademarks for application. For example:
Practical application scenarios
Applied-for-trademarks in China
In November 2021, Nike launched “NIKELAND” on Roblox. Here, players can use in-game currency to buy and wear virtual goods, shop in stores, dress themselves up with a variety of metaverse custom products, and even play sports mini-games.
（9;25;35;41;
42）
In May 2021, the virtual anchor “Mei Setian” released the first virtual human talk show “Mei De Shuo” on the Tencent News platform. Due to its unique perspective from the “virtual person’s point of view”, the talk show became more humorous, absurd, and thought-provoking. The video has quickly surpassed one million views.
(Mei Se Tian in Chinese)（9；14；16；18；25；28；35；38；41；42；43）
In October 2021, a virtual beauty Influencers named “Liu Yexi” known for capturing mystical creatures made a surprise appearance on TikTok and in just two minutes, cyberpunk and ancient fantasy scenes were staged, opening up the “metaverse” imagination of millions of viewers. This performance instantly garnered a million followers.
(Liu Yexi)（36；38；39； 45）
In November 2022, Zhangjiajie released the beta version of the world’s first scenic metaverse platform “Zhangjiajie Planet”. The registration for the auction of the naming rights of the world’s first virtual mountain was launched at the same time, and users can participate in the experience and auction by paying a registration fee of only CNY 1 (approximately USD 0.14).
(Zhangjiajie Planet in Chinese)（39）
In February 2022, miHoYo launched its own metaverse brand, HoYoverse. In January 2023, its President Liu Wei said in an interview that his vision is to create a virtual world in which 1 billion people want to live by 2030.
（all 45 classes）
Judging from the above situation, trademark applications for the metaverse in China have basically returned to rationality, and entities have begun to file trademark applications according to the actual needs of the development of its own metaverse business. In the author’s opinion, compared to the straightforward terms like “元宇宙 (Yuan Yu Zhou – Metaverse in Chinese)” or “metaverse”, some enterprises adopting the character “元 (Yuan – meta in Chinese)” of “元宇宙 (Yuan Yu Zhou – Metaverse in Chinese)” in Chinese character trademarks, or adding the “verse” part of “universe” in an English trademark, or naming with “LAND” or “星球 (Xing Qiu – planet in Chinese) at the end of a trademark are all worth considering and referencing.
(2) Designated goods and services
As you may be aware, at present, China does not yet accept the direct expression of virtual goods or services. So, how should the protection and registration of metaverse trademarks be carried out in China? The author found that people are displaying their unique talents and actively experimenting in various ways.
① Designating goods or services related to the metaverse, such as “virtual reality headsets”, “electronic funds transfers via blockchain technology”, “provision of online virtual tour guides”, etc., which are newly introduced in the 2022 and 2023 texts of the Nice Classification.
② While under normal circumstances, the CNIPA only accepts standard names that have been listed in the Classification of Similar Goods and Services8 and names of goods and services that are not listed therein but published by the Trademark Office on a regular basis, there are exceptions. For example, in the following cases, a number of non-standard expressions related to the metaverse were also successfully accepted. Therefore, to seize the initiative, it is also a wise attempt to actively designate goods or services with similar descriptions to goods or service listed in the Classification of Similar Goods and Services.
Registered Trademark
爱旗 (Ai Qi – a coined word in Chinese) (Reg. No. 70350068)
Filing date: March 21, 2023
Class 9
Downloadable virtual items for online games and online virtual worlds, etc.
Registered Trademark
HARMAN/KARDON
(Reg. No. 69805083)
Filing date: February 24, 2023
Class 9
Downloadable computer software to access and use in an online environment for creating, making, and modifying digitally animated and non-animated graphic character avatar’s digital overlays, skins, etc.
Registered Trademark
LUNA COUCH
(Reg. No. 62739617)
Filing date: February 21, 2022
Class 41
Provide online interactive games that allow players to interact at the same time in a virtual environment, entertainment services (provide users with a virtual environment that can interact at the same time for entertainment purposes), etc.
③ Designating the relevant virtual goods or services in a Madrid International Registration and extending the protection of the international registration to China.
The author also found that some foreign companies, such as PRADA S.A., have also begun to try to file and register trademarks containing virtual goods or services by designating China through international registrations.
Trademark
普拉达
(Pu La Da – PRADA in Chinese)
Filing date: March 23, 2023
Class 9
Downloadable virtual products, namely, computer programs for use online and in online virtual environments, all the aforesaid goods connected with perfumery, toiletries, cosmetics, makeup, cosmetic products for skin care, cosmetics for body care, facial care preparations, hair care preparations, hair coloring preparations, jewelry, fine jewelry, timepieces and chronometric instruments, leather and imitations of leather, luggage, bags, vanity cases, wallets, clothing, shoes and headwear, and care, hygiene and beauty services.
Class 35
Online retail services, namely, sales promotion for third parties, featuring downloadable virtual products, namely, computer programs for use online and in online virtual environments.
Class 38
Electronic transfer of downloadable digital files authenticated by non-fungible tokens [NFTs] and incorporating cryptographic protocols used to operate on a computer platform in the field of blockchain technology, etc.
Class 41
Entertainment services linked to the hosting of virtual shows and social entertainment events, etc.
Class 42
Research and development of new virtual products for third parties containing text, image, video, audio, art work files, authenticated by non-fungible tokens [NFTs], etc.
(3) Advice on trademark applications in China
As the saying goes, “before transporting the grain and forage, the trademark advances”. In the author’s opinion, the above three methods are all good attempts to actively strive for the confirmation of rights. In order to seize the initiative, enterprises can combine the characteristics of artificial intelligence, blockchain, cloud technology, digital twins, virtual reality, encryption and other characteristics of the metaverse to carry out the layout and protection of metaverse trademarks in the following classes in advance. The following recommendations are the current standard items listed in China’s Classification of Similar Goods and Services or the names of acceptable goods or services published by the Trademark Office.
① Core classes
Class 9
Downloadable computer applications; virtual reality game software; digital wallets (downloadable computer software); virtual reality headsets; headsets for virtual reality games; virtual reality glasses; head-mounted displays; interactive multimedia computer game programs; security tokens (encryption devices), etc.
Class 41
Providing online virtual tour guides; providing online virtual reality games on computer networks; virtual reality arcade services; virtual workout services; providing non-downloadable online electronic publications; entertainment services, etc.
Class 42
Providing virtual computer systems through cloud computing; design and development of virtual reality software; design and development of multimedia products; research in the field of artificial intelligence; user authentication services using blockchain technology; data encryption and decoding services, etc.
② Highly related classes
Class 35
Digital advertising services; business consulting services on digital transformation, etc.
Class 36
Providing electronic fund transfers through blockchain technology, etc.
Class 38
Virtual chat room service based on text message transmission; Providing Virtual Private Network (VPN) services; digital file transfers, etc.
In addition, it is reported that in 2023 the Committee of Experts of the Nice Union approved a series of useful additions to the Nice Classification, which will enter into force on January 1, 2024, in the thirteenth edition of the Nice Classification (2024 version). The CNIPA is also planning to revise and adjust the Classification of Similar Goods and Services and it remains to be seen whether more acceptable descriptions of virtual goods or services will be added in accordance with the current situation.
(4) Status of rights protection
NFT (Non-Fungible Token) digital works are specific digital creations that are uniquely identified using blockchain technology, which convert digital assets into NFTs and promote economic activities in the metaverse space. For the emerging business model of NFT, there is currently no clear legal provision in China. However, in December 2022, the Intermediate People’s Court of Hangzhou Municipality, Zhejiang Province, made a judgment on China’s first NFT infringement case - the “Fat Tiger Vaccination” case9, which can give us some inspiration and reference.
Image source: Hangzhou Internet Court’s official WeChat public account
In this case, the plaintiff in the original trial, Qi Ce company, alleged that Wang’s unauthorized trading of the NFT digital work “Fat Tiger Vaccination” through the Bigverse platform operated by the defendant in the original trial, Yuan Yu Zhou Company. The plaintiff claimed that this action infringed upon its legally entitled copyright for the art work, and caused economic losses. The following views are presented in the second-instance judgment:
1. As a form of digital collection, NFT digital works conform to the characteristics of online virtual property and have the attributes of property interests.
2. The sale and transfer of NFT digital works is not an act of distribution in the sense of the Copyright Law. In view of the online virtual property nature of NFT digital works, it is challenging to apply the right of distribution to regulate the sale and transfer process of NFT digital works, so there is still no legal basis for the application of the exhaustion-of-rights doctrine in the transaction of NFT digital works.
3. The minter and publisher of an NFT digital work should not only be the holder of the specific digital work, but also the copyright owner or authorized owner of the digital work. In addition to the obligations that general network service providers should undertake, the defendant in the original trial, Yuan Yu Zhou, as a platform operator specializing in NFT digital works trading services, should also establish an effective intellectual property examination mechanism to scrutinize the legality of the source of NFT digital works. Yuan Yu Zhou failed to fulfill its duty of due diligence in the examination, and by not taking necessary measures when aware of infringement, it exhibited subjective fault. Its actions constituted assisting infringement.
In the author’s opinion, this case defines the nature of NFT digital works, and emphasizes that NFT digital works trading platforms should bear a higher duty of due diligence. When users publish and trade infringing NFT digital works on a “metaverse” platform, if the platform fails to fulfill the necessary examination obligations, it should bear civil liability for assisting the infringement, etc. These new explorations provide important references for the standardization of intellectual property rights in China’s NFT field in the future, as well as the direction of rights protection when NFT works are infringed upon.
III. Conclusion
In view of a series of problems brought about by the metaverse, such as the territorial breakthrough, the virtual contextualization of trademarks, the upgrading of the classification of goods and services, and the cross-spatial determination of trademark infringement, it will become complex and changeable to protect one’s trademark in the metaverse. In the current environment, it is more crucial to being proactive in building one’s own armor and shield, and laying out a trademark in advance. In this case, it is a good idea to choose a trendy name and register it as early as possible in Classes 9, 35, 41, 42, etc., which are closely related to virtual assets. This measure will not only prevent important trademarks from being preemptively registered by others in the classes related to virtual assets but will also provide a certain degree of protection for enterprises utilizing trademark assets to enter the metaverse in the future.
