NFTs and the Metaverse: UKIPO issues update on classification
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Our recent post on NFTs and the metaverse (Handbags at dawn – the latest twists in the MetaBirkin case | Fieldfisher) touched on the issue of classifying goods and services in these areas in trade mark specifications.
The UKIPO has now issued a practice amendment notice (PAN) on this topic: PAN 2/23: The classification of non-fungible tokens (NFTs), virtual goods, and services provided in the metaverse - GOV.UK (www.gov.uk).
The PAN is well reasoned and makes clear this is an evolving subject and is likely to change. The position taken is along the lines we have seen at WIPO and the EUIPO, although it goes a little further:
- Virtual goods sit in class 9 (as they are merely data) and the goods should be specified, e.g. "downloadable virtual handbags";
- NFTs are not protectable per se; the asset to which they relate should be specified, e.g. "downloadable digital files authenticated by non-fungible tokens [NFTs]";
- NFTs may relate to physical goods and if so they will be accepted in the appropriate class in this manner: "artwork, authenticated by non-fungible tokens [NFTs] [Class 16]"; "handbags, authenticated by non-fungible tokens [NFTs] [Class 18]";
- retailing of NFTs and/or provision of them via online marketplaces sits in class 35, e.g. "Retail services connected with the sale of [e.g. virtual clothing, digital art, audio files] authenticated by non-fungible tokens"; "Provision of online marketplaces for buyers and sellers of goods and services which are authenticated by non-fungible tokens";
- virtual services generally sit in their normal classes, with the mode of delivery being specified, e.g. "delivered via virtual means"; "delivered via the metaverse". The PAN acknowledges that this will not be appropriate for everything, e.g. providing food and drink in the metaverse, but that these are likely to fall neatly into an alternative such as entertainment in class 41.
If we can help you to navigate this new area to ensure you have the best trade mark protection, do get in touch.