An uptick in trade mark applications for virtual goods and services as consumers look to the metaverse to buy luxury products and enjoy virtual experiences illustrates how societal trends can influence trade mark filings. This is no surprise given Metaverse Fashion Week is now an annual event featuring big brands such as Coach, Adidas and Tommy Hilfiger. Additionally, a digital fashion designer has sold more than 2.5 million items of digital clothing, and Roblox’s Gucci Town continues to be a major drawcard in the metaverse.
For trade mark practitioners there has been some uncertainty as to how best to classify virtual goods and services and what wording to use to describe them. Thankfully, IP Australia has issued some guidance on classification, as well as how to deal with NFTs and blockchain technology as it relates to goods and services.
For virtual goods, an application must specify the exact nature of those goods rather than make a broad claim for ‘virtual goods’ or ‘downloadable goods’. An application for a virtual car sold under the trade mark HYUNDAI for example, should claim “downloadable virtual vehicles”. If McDonalds wanted trade mark protection for a virtual restaurant, this would be classified not in class 43, which covers a physical restaurant, but as an entertainment service in class 41. An appropriate claim might be “entertainment services provided in virtual environments or entertainment services in the nature of a restaurant provided in a virtual environment”. Similarly, if Qantas was looking to offer a flight simulation this would be considered an entertainment service in class 41, not an air service in class 39.
The full guide is located here.
Whether you have existing goods and services in the virtual space, or you’re looking to expand into the metaverse, now’s a good time to review your brand protection strategies with an eye to the digital world.
