Trademark Protection (3) – Outlook on Metaverse Trademark Protection (Mainland China)

January 2024

Lihui Jiang and Jane Tsai

I. Background of Metaverse Trademarks

Since 2021, a global trend “metaverse” once swept across the world, especially after Facebook rebranded its company name to “Meta.” As of February 21, 2022, there are approximately 16,000 trademark applications related to “Yuan yu zhou” or “METAVERSE” in the Chinese trademark database^[1]. While the enthusiasm has deminished somewhat now, trademark protection in the context of the metaverse remains a highly noteworthy topic.

The term “metaverse” originated from the novel “Snow Crash” and refers to a networked space distinct from the real world. According to the definition by Professor Chen Gang and Dr. Dong Haoyu of Peking University, the metaverse is a virtual world created and connected through technological means, reflecting and interacting with the real world, constituting a digital living space with a novel social system^[2]. Currently, major multinational corporations are actively establishing trademark portfolios related to the metaverse to protect their brands in virtual worlds. The United States witnessed its first metaverse trademark infringement case ruling on February 8, 2023^[3].

II. Judgment of Metaverse Trademark Infringement Lawsuit in the United States

In May 2021, American artist Manson Rothschild released the NFT artwork “Baby Birkin,” which was auctioned for approximately $23,500. In November of the same year, he launched the website MetaBirkins.com, showcasing 100 NFT artworks modeled after Hermès platinum bags and achieved substantial sales turnover.

Upon noticing the “Meta Platinum” NFTs, Hermès issued a cease-and-desist letter in December 2021 and formally filed a lawsuit in the Southern District Federal Court of New York on January 14, 2022. Rothschild was accused of trademark infringement, trademark dilution, cybersquatting, damage to reputation, and unfair competition. After the trial, a jury composed of nine jurors sided with Hermès’ claims, finding that Rothschild committed trademark infringement, trademark dilution, and cybersquatting^[4].

III.  Classes of Metaverse Trademarks

Different countries or regions may have varying approaches to classifying and protecting virtual goods. The European Union Intellectual Property Office (EUIPO) has classified virtual goods and NFTs under Nice Classification Class 9^[5]. In the United States, multinational companies such as Nike, Walmart, and Ford have applied for trademarks related to virtual goods, primarily falling under Class 9 and Class 35^[6].

As of now, the Chinese “Classification of Similar Goods and Services” has not included “virtual goods.” The metaverse trademark applications mentioned at the beginning of this article predominantly refer to trademarks containing the term “metaverse,” and the Trademark Office has rejected numerous applications to combat opportunistic behaviors. However, this does not mean that companies cannot proactively prepare. Foreign enterprises can consider registering through the Madrid system and applying for territorial extension protection. For local trademark applications, the following classes include expressions related to the virtual world:

IV. Conclusion

 With technological advancements and increasing reliance on electronic products and cyberspace, the development of the metaverse is anticipated to continue. Generally speaking, legislation tends to lag behind emerging concepts or phenomena in society. To proactively secure trademark protection in the new field, companies are wise to plan trademark strategies related to the metaverse.

[1] ThePaper: https://www.thepaper.cn/newsDetail_forward_16787253
[2] Tencent: https://new.qq.com/rain/a/20211119A02CIJ00
[3] Caijing: https://www.mycaijing.com/article/detail/485391?source_id=40
[4] Idem
[5] Intellectual Property Protection in China: http://ipr.mofcom.gov.cn/article/gjxw/lfdt/mj/sbmj/202208/1972498.html
[6] United States Patent and Trademark Office: https://www.uspto.gov/

Related Articles

• Trademark Protection (1) – Brand Protection and Trademark Registration (Mainland China)
• Trademark Protection (2) – Recourses for Preemptive Trademark Registration (Mainland China)
• Trademark Protection (4) – Punitive Damages for Trademark Infringement (Mainland China)

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