February 2024
Jane Tsai, Doris Hsu, Elesha Wang
The flourishing development of the Metaverse gradually integrates the real and virtual worlds, allowing consumers not only to navigate freely between the two realms but also to bring limitless business opportunities for brands. However, along with this growth, emerging controversies arise. In the “Metaverse Trademark Issues Series (2)：Examining Trademark Protection from the Hermès Birkin Bag NFT Dispute (Taiwan),” we discussed the legal action taken by the luxury industry-leading company Hermès International and Hermès of Paris, INC. (hereinafter referred to as “Hermès”) against American NFT artist Mason Rothschild regarding the issuance of NFT digital assets for the Hermès Birkin bags. The U.S. court ultimately ruled in favor of Hermès in 2023. Despite litigating resolutions, trademark owners should actively manage their Metaverse trademark portfolio to safeguard their brands in the virtual world. Here are recommendations for the Metaverse trademark portfolio:
1. Register beforehand to obtain trademark protection in the categories of Metaverse-related goods and services:
Taiwan’s trademark classification for designated goods and services adopts the Nice Classification of the World Intellectual Property Organization (hereinafter referred to as “Nice Classification”). In response to the emergence of the Metaverse, both the 2023 and 2024 editions of the Nice Classification have introduced new or adjusted categories for virtual goods and services, including i) an amendment in Class 9 that “Downloadable digital image files authenticated by non-fungible tokens (NFTs),” and additions in Class 9 that “Downloadable digital music files authenticated by non-fungible tokens (NFTs)” and “Downloadable computer software applications for minting non-fungible tokens (NFTs)”; ii) an addition in Class 25 for “Clothing authenticated by non-fungible tokens (NFTs)”; iii) additions in Class 35, such as “Retail services relating to downloadable digital image files authenticated by non-fungible tokens (NFTs)” and “Provision of an online marketplace for buyers and sellers of downloadable digital image files authenticated by non-fungible tokens (NFTs)”; and iv) an addition in Class 42 for “Providing online non-downloadable computer software for minting non-fungible tokens (NFTs).”
In this regard, it is recommended that businesses planning to enter the virtual world comprehensively review the scope of existing registered trademarks and consider whether the product line using those trademarks may be expanded to the virtual world in the future. If so, it is advisable to promptly secure the position and expedite the trademark applications for designated goods and services related to Metaverse.
2. Actively use the trademark to prevent the revocation of trademark rights:
Trademark owners should actively engage in the Metaverse market, consistently utilizing registered trademarks to establish brand reputation and presence. This practice facilitates providing supporting evidence when asserting rights, prevents the trademark from being revoked for non-use over an extended period, and strengthens the defensive power of trademark rights[1].
3. Continuously Monitor Trademark Utilization:
Trademark owners should continuously monitor the use of their trademarks in the Metaverse, or entrust external professionals to conduct trademark monitoring services in relevant markets or online. This practice allows for immediate action upon learning of potential infringement activities, ensuring the prompt protection of brand interests[2]. In addition to asserting rights by intellectual property laws, trademark owners can file complaints against unfair market competition following the Fair Trade Act with the Fair Trade Commission or the court.
[1] Bi-e Wu, The real virtual world is very different; the Metaverse trademark needs to be registered separately, North American Intellectual Property News, October 12, 2022, http://www.naipo.com/Portals/1/web_tw/Knowledge_Center/Trademark/IPNC_221012_1901.htm (last visited February 19, 2024).
[2] Hung-Chieh Chen, Trademark Issues Related to the Concepts and Technologies of the Metaverse, 288 Intellectual Property Right Journal 19, 6-19 (2022)
Related Articles
- Metaverse Trademark Issues Series (1)：Have You Deployed Your Trademarks to Embrace the Metaverse? (Taiwan)
- Metaverse Trademark Issues Series (2)：Examining Trademark Protection from the Hermès Birkin Bag NFT Dispute (Taiwan)
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