The Metaverse trademark is creating a buzz. Increasingly, corporations are focusing on the development of Metaverses, and major brands are entering the Metaverse through gaming, social networks, and digital commerce. In addition, they need secure the appropriate IP rights to protect their brands on this emerging new digital market. Thus, fashion producers are submitting trademark applications in the United States and the European Union to ensure the digital projection of their footwear and accessories. Their objective is to position oneself and secure intellectual property rights in time to reap the financial benefits of this digital commerce space.
While technological and business innovations in the Metaverse are advancing rapidly, the law is falling behind. The trademark programs of the United States and the European Union are very adaptable, letting new filings to cover the particular products and services to be delivered and protected in Metaverse, but China struggles to adapt. The reason is within the Chinese language submitting system’s genetic code. The Chinese trademark system is distinguished by first-to-file and strong formalism in the selection and naming of goods and services from a courses/subclasses structure with rigid descriptions. This method is too formal to allow for rapid adaptation. Consequently, submitting logos in China for the Metaverse might be quite challenging, as there are no product or service descriptions that clearly fit the purpose.
This blog post illustrates some of the challenges, strategies, and aims of multinational fashion brands seeking to protect their trademarks in China’s Metaverse.
Difficulties in Submitting Marks in the Metaverse
International brands, motivated by the need to secure a consistent global portfolio for their Metaverses, are submitting new logos in China for this purpose. In addition to the need for portfolio consistency, they must also obtain legal protection in order to fully leverage the additional advertising opportunities that the Metaverse provides, particularly when targeting younger customers.
The most popular classes for these new filings are classes 9, 35, 36, 41, 42, etc., which cover objects and businesses related with Metaverse. The majority of these registrations are still pending because the first wave of filings for the Metaverse in China did not begin until the spring of 2022. The majority of filings are national Chinese filings as opposed to international filings.
The difficulty is that product and service descriptions must be selected from those available in the Chinese language Classification system. This technique does not now provide a description that might precisely match products and services for the Metaverse. For instance, you would not be able to register a trademark in China at level 9 with the following description: “Downloadable digital items, specifically computer applications comprising footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, artwork, toys, and equipment to be used online and in online digital worlds.” Therefore, candidates must choose the standard descriptions that come closest to describing what they intend to defend. Common Chinese language submissions for trend marks in the metaverse at school 9 in China include the following specifications: “Software program, head-mounted digital actuality machine, digital pockets, downloaded motion pictures, digital actuality sport software program”
In China, it may be difficult to use such submissions in trademark opposition, invalidation, or infringement procedures. In addition, we do not know if the current trend of trend manufacturers to register standard products/companies in the Chinese language classification that are conceptually close to potential metaverse uses of consumer products will provide extra and enhanced safety. What examiners and enforcers will do with these new submissions is not well defined or indicated.
Despite these obstacles, there are numerous compelling reasons for multinational producers to continue applying.
Reasons for Submitting Customized Marks for Model Safety in the Metaverse
As of yet, there is no decision to notify us, as the majority of Metaverse decisions in China to date have included NFTs and copyright rather than logos. Nonetheless, there are causes to consider that Chinese language trademark examiners and judges shall be extra prone to use the brand new submitting at faculty 9 (software program and pc purposes, on-line gaming, digital actuality gadgets) to guard a metaverse shoe, for instance, than the corresponding mark at faculty 25. (clothes, footwear and attire). A metaverse shoe, for example, is essentially a computer program, so it is unlikely that an examiner or a judge would extend the protection of a class 25 registration to include Metaverses. Considering that trademark infringement lawsuits involving clothing and equipment in online gaming typically rely on emblems at school 9 and/or 41, it’s conceivable that the judge will also rely on the mark at school 9 and/or 41 for the infringement claim involving metaverse footwear and equipment.
Moreover, considering the number of Metaverse-related trademark filings and the rapid development of the Metaverse industry in China (by the end of 2021, over 12,000 Metaverse-related trademarks had been filed in China by over 1,500 companies), we believe that a global fashion brand would face significant disadvantages if it did not file such marks in China. Assuming that trademarks serve as a means of promoting goods in the Metaverse, their submission and registration will alert consumers that the brand is active in this new market segment and prepared to compete. At the same time, these filings will impose restrictions on appropriators and infringers. Neglecting such filings will allow grabbers and infringers to seize the vacant space, especially in light of the first-to-file rule in China. In China, it is far cheaper to file and prosecute a trademark than to improve it.
Conclusions
Given the formal rigour of the Chinese language trademark categorization system, there are compelling reasons for a global trend model to submit such emblems even if it is not yet obvious whether new “Metaverse”-focused trademark applications in China will be successful. According to the author’s knowledge, grabbers are already at work and can easily occupy the vacant space left by a reluctant multinational brand owner. This may delay the latter’s submissions and put them at a competitive disadvantage with their overseas competitors who have already secured filings. The cost and risk of submitting marks that do not provide complete and outstanding protection is significantly less than the risks associated with not filing such marks at all. The race begins.
