Trade marks can be used to protect a logo, phrase, word, letter, colour, sound and more and must be applied for in the relevant goods or services class.
IP Australia recently released welcomed guidance on the classification of goods and services relating to emerging technologies in trade mark applications.
The guide consists of four categories:
- Virtual goods;
- Blockchain;
- Metaverse and virtual environments; and
- Non-fungible tokens (NFTs).
Until now, these emerging technologies were not covered in the IP Australia Trade Marks Manual of Practice and Procedure and it had been queried as to whether existing trade mark protection for real world goods was sufficient to cover digital goods of the same description. IP Australia’s guidance confirms that protection should be sought for the digital goods.
Virtual goods and blockchain
Applications that describe a class of goods merely as ‘virtual goods’, ‘downloadable goods’ or ‘blockchain’ lack specificity and will not be accepted by IP Australia.
IP Australia requires trade mark applications for virtual goods to specify the nature of the virtual goods (such as software, image files, music, or clothing) and are correctly classified in Class 9 because the goods to which they relate consist essentially of data.
The appropriate technology related class for a trade mark application for services relating to blockchain and virtual goods will depend on the nature of the service itself.
The Metaverse and Virtual Environments
IP Australia has stated in its guidance that while the terms ‘metaverse’ and ‘web3’ will be accepted in applications, the term ‘virtual environments’ is preferred. In determining the appropriate class of services, applicants should select the class that describes the real-world impact.
The example used by IP Australia’s guidance is that of a virtual restaurant appearing in an online environment and how it does not involve physical food because the avatar is consuming virtual food. Restaurant services provided in an online environment would therefore be considered a Class 41 entertainment service instead of a Class 43 restaurant service.
There may be instances where the virtual and real-world effects of a service in a virtual environment are the same and therefore the same class will be applicable. For example, education or banking services (where real funds are sent and received) will have the same impact in a virtual environment as in the real world.
What is an NFT and can it be trade marked?
NFTs are unique cryptographic tokens that exist on a blockchain and cannot be replicated. IP Australia’s guidance provides that an NFT “acts as a digital certificate used to record ownership of an item such as a digital artwork or collectible. An NFT is not considered to be a good or service but a means of certification.”
The word mark for ‘NFT’ or ‘non-fungible token’ cannot be registered on its own because, pursuant to IP Australia’s guidance, “it lacks specificity”. Applications must therefore specify the exact nature of the goods being authenticated by the NFT. Services relating to NFTs must also be adequately specified.
The following examples are provided in IP Australia’s guidance:
- Class 9: downloadable digital image files authenticated by non-fungible tokens [NFTs]
- Class 35: retail services relating to downloadable digital image files authenticated by non-fungible tokens [NFTs]
- Class 42: providing online non-downloadable computer software for minting non-fungible tokens [NFTs]
Summary
It is important to make plans to protect, exploit and defend intellectual property rights in this new digital environment. Seeking assistance from experienced intellectual property lawyers is recommended to ensure trade marks are correctly classified and registered.
