As more companies establish a presence in the “Metaverse,” the virtual world where businesses operate and trade, the issue of trademark protection has ignited a contentious discussion. The European Union Intellectual Property Office (EUIPO) and national offices have witnessed a surge in trademark applications for “virtual goods,” numerous trademarks are now registered for use within the Metaverse.
In July 2022, the EUIPO released guidance on classifying items related to “virtual goods and NFTs” to address this novel situation. Recently, the EUIPO’s Second Board of Appeal encountered its first challenges in two decisions concerning trademarks: METAVERSE FOOD (R2357/2022-2) and METAVERSE DRINK (R2356/2022-2). These cases marked the EUIPO’s foray into protecting the term “Metaverse” as a trademark for physical goods.
The Case: METAVERSE FOOD and METAVERSE DRINK
On February 11, 2022, Oshee Polska, a Polish company, filed EU trademark applications for METAVERSE FOOD, covering pharmaceutical preparations, nutritional supplements, foodstuffs, drinks, and METAVERSE DRINK, encompassing various beverages. However, the EUIPO rejected both applications, citing a lack of required distinctiveness.
Oshee Polska appealed the decisions, arguing that their applications pertained to physical goods, not virtual ones. They contended that assessing a trademark’s distinctiveness hinges on its applicability to real-world products, as virtual goods cannot be transferred to reality. Additionally, they emphasized that “Metaverse” refers to a category in the virtual world, distinct from other online activities. They pointed to their previously registered METAVERSE ENERGY trademarks for goods in classes 5 and 32 to support their claims. They argued that denying registration for METAVERSE FOOD and METAVERSE DRINK would contradict the EUIPO’s established guidelines and practices.
However, the Board of Appeal (BoA) upheld the EUIPO’s rejection, ruling that “Metaverse” denotes a virtual space, and the terms METAVERSE FOOD and METAVERSE DRINK signify “food in a virtual space” and “drink in a virtual space,” respectively. The BoA further concluded that the distinction between the real and virtual worlds within the Metaverse is blurred and not limited to a specific virtual world. Instead, the Metaverse serves as another version of e-commerce, with companies leveraging it to promote their physical goods and brands, leading to increased real-world sales. The BoA cited various Internet articles, such as Lindt’s virtual US store, where chocolate products can be ordered, as evidence to support its stance.
Moreover, Oshee Polska’s argument was rejected based on the EUIPO’s previous registration of other METAVERSE-related trademarks. The EUIPO clarified that their past decisions do not establish a uniform practice, and prior proceedings errors should not justify registering a non-distinctive sign under Article 7 of the EUTMR (European Union Trade Mark Regulation).
The BoA’s decisions have far-reaching implications for trademark protection in the Metaverse. According to their interpretation, trademarks featuring the term “Metaverse” lack distinctiveness for online goods and services. This ruling poses a challenge for entities seeking exclusive rights over the term within the EU.
The EUIPO has previously registered some trademarks containing “Metaverse” for goods like backpacks, school bags, and suitcases (class 18). In light of the BoA’s reasoning in the METAVERSE FOOD and METAVERSE DRINK cases, the distinctiveness of these marks may be questioned, leaving room for potential challenges.
The Future Outlook
The EUIPO’s stance on future cases remains uncertain, but the decisions in the METAVERSE FOOD and METAVERSE DRINK cases set a precedent. It appears that monopolizing the term “METAVERSE” as a trademark within the EU may be challenging due to its perceived lack of distinctiveness.
Companies operating in the Metaverse must carefully strategize their trademark applications, ensuring they meet the criteria for distinctiveness to secure proper protection. As the Metaverse evolves and continues to impact commerce, businesses must stay informed about trademark regulations and adapt their branding strategies accordingly.
The recent decisions of the EUIPO’s Second Board of Appeal concerning METAVERSE FOOD and METAVERSE DRINK trademarks have shed light on the complex issue of trademark protection in the ever-expanding Metaverse. The BoA’s ruling emphasized the blurred lines between the virtual and real worlds within the Metaverse, leading to a lack of distinctiveness for marks containing the term “Metaverse” applied to goods offered online. This has significant implications for businesses seeking to safeguard their intellectual property in this dynamic virtual realm.
For companies operating in the Metaverse, navigating the evolving landscape of trademark protection with expert legal guidance is crucial. As this new era of virtual commerce unfolds, businesses can turn to Brealant, a leading IP law firm, for comprehensive support in securing and defending their trademark rights. With Brealant’s expertise, businesses can confidently navigate the unique challenges the Metaverse poses and ensure their brand’s protection in this exciting digital frontier.