1. Abion
  2. /
  3. Insights & News
  4. /
  5. Virtual Trade marks: Protecting Brand identity beyond the Digital frontier
Register your trademarks for Metaverse

As the virtual world continues to expand, businesses across industries are recognizing the critical importance of safeguarding their brand identity. While legal restrictions are still catching up with this dynamic landscape, adopting best practices for trade mark application becomes a proactive approach to protect intellectual property.

We provide you with actionable insights into best practices for brand protection. By embracing these strategies, companies can secure their brand equity and capitalize on the opportunities presented by the growing virtual market.

The MetaBirkin Case and the Risks of Inadequate Trade mark Protection

The high-profile MetaBirkin case involved luxury fashion brand Hermès suing artist Mason Rothschild over his NFT project called "MetaBirkins." Rothschild created digital versions of Hermès Birkin handbags with modifications, leading to Hermès claiming trade mark infringement and potential consumer confusion. The trial resulted in a federal jury finding Rothschild guilty and in February 2023 awarding Hermès $133,000 in damages. This case raised questions about the classification of NFTs as commodities or protected art, highlighting the clash between emerging technologies and established brands.

Further Guidance Published

The Significance of Trade mark Protection for Virtual Goods and Services

The MetaBirkin case underscores the risks businesses are facing by not opting for trade mark protection for virtual goods and services. Without adequate safeguards, companies may experience dilution of their brand identity and the potential for consumer deception.

In a digital landscape where virtual goods and services hold significant value, protecting trade marks becomes essential for maintaining brand integrity and preventing unauthorized use or misrepresentation. The MetaBirkin case serves as a reminder of the importance of proactive trade mark strategies in the realm of virtual assets.

Addressing Trade mark Protection Challenges for Virtual Goods and NFTs

Organizations such as the European Union Intellectual Property Office (EUIPO) are actively working towards addressing the issue of trade mark protection for virtual goods and NFTs. In July 2022, the EUIPO issued draft guidelines aimed at providing greater clarity on the classification of items related to virtual goods and NFTs. These guidelines, that entered into force on 31 March 2023, are expected to offer much-needed guidance for trade mark applications in this rapidly evolving field. However, the current lack of established practices and precedents surrounding these types of infringements poses challenges for brand owners, especially in the absence of specific regulations.

"If your company plans to enter the metaverse within the next 2-5 years, consider applying for trade mark protection specifically for virtual goods and services."

- Therese Ehring, Senior Attorney at Law

Best Practices for Trade mark Protection in the Virtual Realm

In the absence of clear regulations, brand owners must adopt proactive measures to protect their trade marks effectively. Here are some recommended best practices:

  • If your company plans to enter the metaverse within the next 2-5 years, consider applying for trade mark protection specifically for virtual goods and services.
  • Protect your goods and services against unauthorized use in the metaverse by implementing a comprehensive trade mark strategy.
  • Follow best practices by classifying virtual goods under Class 9 and virtual services as subcategories within their respective service classes.
  • Understand that adding a new class requires a separate trade mark application.

Conclusion

In the ever-expanding world of virtual goods and services, brand identity protection is paramount. While legal restrictions and regulations are still evolving, adopting best practices for trade mark application is crucial. The MetaBirkin case highlights the risks of inadequate trade mark protection, emphasizing the need for proactive strategies to preserve brand integrity in the virtual realm. As organizations like the EUIPO work towards providing clearer guidelines, brand owners must remain proactive and adapt their trade mark strategies to this dynamic landscape. By doing so, companies can navigate the challenges, secure their brand equity, and thrive in the burgeoning virtual market.

therese.ehring-1-jpg

Author

Therese Ehring

Senior Attorney At Law
Authorized European Trade mark Attorney

Email me

070 441 00 74

Pernilla.Brocker

Author

Pernilla Brocker

Product Management & Platform Development

Email me

+46 31 720 20 02

Related read

Harbour seen from above
Counterfeit Trade Continues to Challenge EU Markets
Firstpage
Insights & News
IP & Trademarks
The spread of counterfeit products continues to pose a serious challenge across Europe, fueling unsafe, unethical...
Cole Palmer Trade Marking his name
Trade Marking Your Name Isn’t Ego. It’s Strategy.
Firstpage
IP & Trademarks
Okategoriserad
Cole Palmer’s COLD PALMER and signature trade marks highlight how athletes use IP to safeguard and monetise their...

Curious about how we can protect your trade mark?

Are you interested in protecting your trade mark? Contact our lawyers and experts today and start your journey towards a strong trade mark!

This website uses cookies

Cookies consist of small text files. They contain data that is stored on your device. To enable us to place certain types of cookies we need to obtain your consent. At Abion AB, corp. ID no. 556633-6169, we use the following kinds of cookies. To read more about which cookies we use and storage times, click here to access our cookies policy.

Manage your cookie-settings

Necessary cookies

Necessary cookies are cookies that must be placed for basic functions to work on the website. Basic functions are, for example, cookies which are needed so that you can use menus on the website and navigate on the site.

Functional cookies

Functional cookies need to be placed on the website in order for it to perform as you would expect. For example, so that it recognizes which language you prefer, whether or not you are logged in, to keep the website secure, remember login details or to be able to sort products on the website according to your preferences.

Cookies for statistics

For us to measure your interactions with the website, we place cookies in order to keep statistics. These cookies anonymize personal data.

Cookies for ad-tracking

To enable us to offer better service and experience, we place cookies so that we can provide relevant advertising. Another aim of this processing is to enable us to promote products or services, provide customized offers or provide recommendations based on what you have purchased in the past.

Ad measurement user cookies

In order to show relevant ads we place cookies to tailor ads for you

Personalized ads cookies

To show relevant and personal ads we place cookies to provide unique offers that are tailored to your user data