Louis Vuitton, Givenchy, Gucci, Burberry,Prada, Ralph Lauren, and many more brands are starting to appear in the digital world, be it in a video game or in a metaverse[1].Players and avatars can now wear their favourite brands and visit their usual shops to buy virtual products akin to their physical counterparts. This shift to a new market brings several challenges regarding trademark protection.
These emerging legal issues have been studied by the relevant Intellectual Property Offices and cases are beginning to appear before courts worldwide, offering some insights regarding how to protect one’s intellectual property in the digital world.
This newsletter provides a timeline of key decisions shaping current Intellectual Property Offices’ practice, guidance on protecting brands in this new environment, as well as an overview of remaining challenges in brand protection.
1. Chronology
The first discussion on the classification of virtual goods and services arose in 2022 within the Committee of Experts of the Nice Union. This Committee evaluates the Nice Classification system and issues recommendations to its Member States[2].A proposition was made by the Swiss Intellectual Property Office to the Committee of Experts to discuss the classification of virtual goods and services in order to ensure consistency across jurisdictions.
This led to discussions inside theCommittee of Experts which culminated in their Thirty-Third Session in 2023.During this Session, it was established that virtual goods should be registered under class 9 (which covers software, downloadable content, etc…), despite some countries arguing for virtual goods to be registered in the same class as the physical goods, for example a clothing brand creating virtual jeans would need to register their trademark under class 25 which covers clothing and in class 9to cover the virtual goods[3].We will come back to the effect of this decision later on.
Regarding services, it was decided that classification of a service should depend on the nature of the service rather than the environment in which it is provided[4]. For example, the purpose of banking services in a virtual environment or in the physical world presents no difference, but the purpose of a travel agency in the physical world differs greatly from the purpose of the same agency in a virtual environment.If a distinction can be made, the virtual service should be registered under an analogous class, such as class 35 (marketing or online sale) or 41(entertainment) depending on the end goal[5].
These changes entered into force on January1st, 2024[6].The Swiss Intellectual Property Office published guidelines the same year as to how register virtual product and services in line with the European practice[7].
A decision from the European General Court was also published at the end of 2024. This decision opposed the European UnionIntellectual Property Office and the applicants for the trademark “Glashütte original” under class 9 for downloadable virtual goods, namely watches, clocks, and their accessories, for use online or in online virtual worlds with regards to the applicability of the usual criterion to virtual products, specifically assessment of the distinctive character of the mark. The EuropeanGeneral Court held that the relevant public will perceive the virtual product the same way it would for the “real” product. Indeed, if virtual products merely represent “real” products, or emulate their function, it is possible to establish a transfer of the relevant public’s perception of the “real” product to the virtual product. This led to the rejection of the trademark because it was merely promotional as it referred directly and solely to Glashütte, a town in Germany famous for its watchmaking. This decision is not limited to goods, but also applies to services as per the decision language. The European GeneralCourt was explicit in its development that the transfer is not automatic, it isnecessary to assess each case individually with consideration to the specific nature of goods and services in question[8].
As of today, the Glasshütte case remains the only decision post Thirty-Third Session. Another notable case that happened before this point is the Meta birkin case, for which a Newsletter has already been published that you can find here (insert hyperlink).
2. how to protect A brand
Virtual Goods
We will start off by examining the best practice regarding goods. As you might have understood by now, virtual goods need to be registered under class 9 which includes recorded and downloadable media, as well as computer software.
For example, a fashion brand like Shirts&Co that traditionally registers underClass 25 for clothing must also apply under Class 9 to protect its virtual apparel. Without Class 9 registration, Shirts&Co will struggle to prevent unauthorized use of its trademark in virtual spaces—unless it is a globally well-known brand[9].
As a result, companies have two main strategies:
Proactive registration under Class 9, ensuring immediate protection.
Monitoring and opposition, allowing companies to challenge third-party applications under Class 9 when necessary and saving the upfront costs of registration, albeit with potential legal costs[10].
Regarding the precise terminology to be used for definitions of the goods when applying for class 9, the Committee ofExperts has been in favour of the term “virtual environments” instead of“metaverse”, it has also noted that “virtual goods” is not sufficient and should be specified, for example “downloadable virtual clothing”. These specificities should be followed to avoid provisional refusal and guarantee a quick processing of applications. Additionally, and as seen with the Glasshütte case, the usual rules and criterion should also be applied to trademark names for virtual goods and services.
Virtual Services
Unlike goods, services rendered in a virtual environment are not automatically limited to one particular class.Instead, it is necessary to analyse if the purpose of the service changes depending on the place it is rendered in, i.e in a virtual environment or in real life.
If the goal of the service remains the same whether it is rendered in a virtual environment or in real life, the class remains the same. For example, financial consultancy services belong to class36, these services keep the same goal and essence whether they are rendered in person, by telephone, online or in a virtual environment. Trademarks for such services will therefore be applied for under class 36[11].
On the other hand, if the goal of the services is deemed to have changed because it is rendered in a virtual environment and not in person, the applicant must register the mark under a class that includes or is analogous to the new purpose. Intellectual Property Office shave accepted analogies made to class 35 (marketing or online sale) and class41 (entertainment or education) for other services[12].
For instance, GreatTravel, a travel company, has started offering vacations in a virtual environment. In the real world, such services aims to offer individuals a physical experience where the customer can go abroad and enjoy new places, which is logically not possible in a virtual environment as there is no physical travel. The purpose of “virtual vacation” can be assimilated to a form of entertainment. Thus, GreatTravel will need to apply for a trademark under class 41 instead of class 39 used for travel arrangement. The same could be said for a restaurant providing “food” in a virtual environment.
In view of the above, it is necessary to analyse how the goal of the services might change once it is offered in a virtual environment. In case of change, comparison with other existing trademark in the same branch already registered for use in a virtual environment could prove useful to ascertain under which class to apply, most likely class 35 or 41. As already mentioned, the applicant will still need to abide to the usual rules and criterion when naming the trademark as ruled in the Glasshütte case.
Classification of services in a virtual environment might pose the most trouble as far as application proceedings are concerned. Nevertheless, with time a clear practice of the differentIntellectual Property Offices should arise and lead to the creation of more precise guidelines.
3. Remaining challenges
Despite these new guidelines, enforcing trademark rights in digital spaces presents challenges. Virtual environments, including the metaverse, transcend geographical borders, raising questions such as:
- Where should trademarks be registered for effective protection in digital spaces?
- Which jurisdiction governs trademark infringement disputes occurring in virtual worlds?
Under European case law, the EuropeanGeneral Court held that only the place of use of the trademark is relevant, as opposed to the place of provision of the goods or services. In this case, it was held that advertisement made toward a European public for an hotel chain in the United States constituted a genuine use in the European territory[13].
In a similar fashion, the United StatesDistrict Court for the Northern District of Illinois has ruled that it had personal jurisdiction over individuals who, through online eCommerce stores, have sold products counterfeiting and infringing on Microsoft’s trademark regarding the game Minecraft. Jurisdiction was thus established because these individuals had made available to customers located in Illinois the infringing products[14].
Given the borderless nature of virtual environments, companies must choose between two approaches:
· Registering trademarks in multiple jurisdictions, though costly and time-consuming.
· Focusing on key markets where the majority of users reside, though this approach may require adjustments over time.
Enforcement also depends on platform policies.The two biggest platforms for the sale of video games and virtual accessories, Steam and theEpic Games Store, offer simple forms to fill out to report trademark infringement[15].Roblox, a virtual environment where people can create and share video games, accepts trademarks claim based on registration in any country[16].On the other hand, Linden Lab, the creator of Second Life which was a precursor to most virtual environments, require an USPTO registration to proceed with the infringement of a trademark[17].Thus, it is wise to analyse which registration would be needed to be protected in a particular virtual environment, before starting to provide goods and services on such platform.
Lastly, the rise of the blockchain and smart contracts have given way to a new type of organisation, the Decentralised Autonomous Organisation (“DAO”). In a DAO, its members vote for the decision to be made which are then automatically enacted if majority is reached[18].Decentraland is a virtual environment built on this technology and who’s goal is to achieve a total decentralisation[19].The total absence of an entity behind a virtual environment might prove challenging once intellectual property questions arise, namely who is going to be held liable in case of infringement, or which jurisdiction would be deemed competent.
4. Insights
The new classification guidelines provide much-needed clarity in the digital world. The registration of virtual goods and services has been harmonised through the Member States of the Nice Agreement which should facilitate the different processes before the differentIntellectual Property Offices.
Although some clarifications are needed with regards to certain aspects, such as possible analogous class for virtual services, or territoriality of the trademarks, the practice of the IntellectualProperty Offices and the case law should address them in the coming years.
As the digital landscape evolves, proactive brand protection is essential. Our firm is here to assist with trademark strategies, application and opposition proceedings, and enforcement actions in virtual spaces. Contact us to safe guard your brand in both the real and digital worlds.
[1] ZENINAMargit, Luxury Brands Embracing The Gaming Industry Today, in : Blog MDAMB
[2] Article 3 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of theRegistration of Marks as amended on September 28, 1979.
[3] Special Union for the InternationalClassification of Goods and Services for the Purposes of the Registration ofMarks (Nice Union), Committee ofExperts, Thirty-Third Session, p. 4.
[4] Ibid.
[5] Special Union for the InternationalClassification of Goods and Services for the Purposes of the Registration ofMarks (Nice Union), Committee of Experts, Thirty-Third Session, p. 4
[6] IGE/IPI’s Newsletter, Newsletter 2023/12 Marques et Designs, 21 December2023
[7] IGE/IPI’s Newsletter, Newsletter n°10, 28 November 2024
[8] EUIPO, Glashütte: virtual watches are perceived the same way as real watches
[9] LA SPADA Anne-Virigine, La propriété intellectuelle dans le métavers, p.364, in : La revue de l’avocat 2022
[10] PARKKathryn, Trademarks in the Metaverse, 12 March 2022, in: WIPO Magazine,
[11]European Union Intellectual Property Office, Trademark Guidelines, 2024 ed,Part B, Section 4.4.2
[12] IGE/IPI’s Newsletter, Newsletter n°10, 28 November 2024
[13] Judgementof the European General Court dated 13 July 2022, case T-768/20
[14] Judgementof the United States District Court for the Northern District of Illinois,Eastern Division, Case No. 24-cv-03262
[15] SteamTrademark complaint form (https://steamcommunity.com/trademark/createtrademarkcomplaint/)and the Epic Games Store “Reporting Intellectual Property Infringement” webpage(https://www.epicgames.com/site/en-US/infringement)
[16] RobloxTerms of Use (https://en.help.roblox.com/hc/en-us/articles/115004647846-Roblox-Terms-of-Use)
[17] LindenLab Intellectual Property Infringement Notification Policy (https://lindenlab.com/legal/intellectual-property-infringement-notification-policy)
[18] GORMANBen, What is a Decentralized Autonomous Organization (DAO)?, 16 June 2023, in :Avast Academy
[19] Decentraland“About Decentraland” webpage (https://docs.decentraland.org/player/general/about/)
Arthur Micheli
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