TRADEMARKS IN THE METAVERSE
INTRODUCTION
Metaverse is a form of a virtual space in which users interact and connect with each other for various activities such as gaming, shopping, exploring and for various other activities and this platform is accessible right from where the user is. This is basically a make believe world in which daily life can be experienced virtually. For instance, consumers can buy virtual products and pay for the same, attend concerts, sports and musical events, create their avatars, buy works of art, travel to places virtually and dine in exotic locations. Consumers in this kind of augmented reality trade with Non fungible tokens and bitcoins as well. The realm of metaverse is quite new and unregulated as a result of which it is plagued by host of legal issues such as privacy and data collection, antitrust or anti competition, free speech and defamation as well as intellectual property issues revolving around patent, copyright , trademarks. If your company is contemplating selling branded goods in the metaverse, trademark applications need to be filed quickly. Knowledgentia Consultants, which is one of the best trademark and brand registration firm in India, is your one stop solution of handling legalities emerging out of unchartered space of augmented reality. Policing brands may prove to be harder in metaverse and with NFT market having its own set of challenges, one may seem to loose more than one expects to gain in the virtual space.
TRADEMARK CLASSES FOR PROTECTION OF TRADEMARKS IN METAVERSE
The Indian Trade Marks Registry has recently received lot of trademark applications under classes 9, 35 and 41 for registration of trademarks in relation to ‘downloadable virtual goods’ and online virtual services. Though it is not easy to find a comprehensive list of all such trademarks in India (recently advertised trademarks throw light on such activity. Some examples include:
- WALMART – Recent trademark application have been filed under Class 9 for Virtual goods, namely, non-fungible tokens, Digital media, namely, digital collectibles, digital tokens, non-fungible tokens (nfts), cryptocurrencies, and digital art, Downloadable digital media, namely, digital collectibles created with blockchain-based software technology and smart contracts; Downloadable virtual goods, namely, computer programs featuring electronics, appliances, indoor and outdoor furniture, home décor, toys, sporting goods, outdoor recreation, health, beauty and personal care products, household essentials, apparel, patio, garden, lawn care and landscaping products, home improvement products, grilling products, entertainment recordings, video games, books and publications, musical instruments, office supplies, arts and craft supplies, holiday and celebration supplies, jewelry, and pet products for use online and in online virtual worlds .
- TOMMY JEANS- Recent Trademark Applications have been filed under Class 9 for virtual reality featuring perfumery, cosmetics, clothing, footwear, headgear, textile goods, goods made of leather or imitations of leather, bags, eyewear, jewellery, watches, horological and chronometric instruments, household accessories and articles; computer software platforms; Tokens [software]; non-fungible tokens (NFT), enabling the authenticity, ownership, availability and trading of digital assets and creations on computer software platforms [software]; downloadable image file containing artwork, text, audio, video, games and internet web links relating to sporting and cultural activities; downloadable multimedia file containing artwork, text, audio, video, games, and internet web links relating to non-fungible tokens;
- VOGUE – Recent trademark application have been filed under Class 9 for downloadable image files; downloadable videos; non-fungible tokens (NFTs); non-fungible tokens (NFTS) relating with digital art, collectibles, photographs, videos, or audio recordings; digital tokens based on blockchain technology; digital collectibles; downloadable virtual goods, namely, downloadable content featuring clothing, design, lifestyle, fashion, couture, culture, technology, food, cooking, travel, current events, health and fitness for use online and in the online virtual worlds; parts and fittings for the aforesaid goods.
CHALLENGES OF PROTECTING TRADEMARKS IN METAVERSE
- JURISDICTION
Ascertaining jurisdiction is a matter of great concern in metaverse. Courts definitely have jurisdiction where parties reside but there is always a practical difficulty to find out where the infringer resides and what is the source from where infringement started or the crime was committed.
- LICENSING
Whether licenses obtained in real world extend to metaverse is another emerging concern in this field. Further outlining the scope of licensing trademarks in metaverse is under debate in different jurisdictions with no uniform conclusion or a way of dealing with the same.
- UNAUTHORISED USE OF TRADEMARKS
Trademarks in metaverse and virtual spaces are more prone to counterfeiting as well as misrepresentation. Popular avatars may wear or propagate famous brands in a positive or a negative light irrespective of how the real brand owners in real world are striving to build the brand image.
- INTERMEDIARY
It is yet to be decided whether metaverse creators will be treated as intermediaries.
CASE STUDIES
In this case, the plaintiff opened an art gallery in the virtual game world with the help of Second life, namely, “SLART”. Subsequently, when he got it registered with the U.S Patent and Trademark Office (“USPTO”) he realised that another user used SLART for his own art gallery. The Court, on September 2008 passed an injunction order, restraining the Second life users from using the SLART mark. Defendant filed a petition, with the USPTO, seeking cancellation of plaintiff’s trademark registration. The Trademark Trial and Appeal Board temporarily suspended the hearings on cancellation until a decision was arrived at in the case. They further sought termination of plaintiff’s account on the grounds of trademark infringement, unfair competition and breach of contract. Ultimately, the two parties arrived at a settlement.
