Droit de la Propriété Intellectuelle | Protection et exploitation des marques dans le Métavers

Technophiles and science fiction fans fantasised about the metaverse for a long time. That fantasy has become a tangible reality, offering real business, marketing, and advertising opportunities. Numerous companies are investing and offering virtual products in certain metaverses. This new phenomenon has highlighted special issues that you will need to plan ahead for in order to protect your trademarks in the virtual world. Our Intellectual Property team takes stock of the situation.

Technophiles and science fiction fans fantasised about the metaverse for a long time. That fantasy is now a tangible reality.

But what is the metaverse? It’s a virtual environment that lets users interact socially with their avatars. They can play together, work together and also trade with each other.

The first forms of the metaverse date back to the 2000s, with experiences such as SecondLife or EverQuest. Interest in the metaverse has been significantly boosted more recently, with the emergence of the blockchain and the arrival of non-fungible tokens (NFT) in 2021.

Today, the metaverse is a virtual market that offers real business, marketing and advertising opportunities.

Numerous companies, including Nike, Reebok, and Toyota , in particular, invest in the metaverse. They now even offer virtual versions of their products in certain metaverses.

This new phenomenon has highlighted special issues that you need to plan ahead for in order to protect your trademarks in the virtual world.

Protecting and exploiting your trademark in virtual worlds

Any economic operator wishing to exploit his brand in virtual worlds is strongly advised to make a new trademark application in which the products and services offered should be particularly carefully identified.

Effectively, to best ensure the protection of a trademark destined for exploitation in the metaverse, the intangible products and services offered in the virtual world must be identified in the trademark application, in the same way as the tangible products and services of a brand exploited in the real world.

For example, if the holder of a trademark registered solely in Class 25, designating “shoes”, fails to prove his trademark’s recognition, he will have greater difficulty opposing the sale of virtual shoes under the same trademark in virtual worlds.

A large number of trademark applications have already been filed for the metaverse. Thanks to that we now have a certain amount of hindsight that allows us to identify the products and services which, on principle, it would be most appropriate to designate in trademark applications:

Class 9: Software; computer programmes; illustrative products/elements /downloadable publications;

Class 35: Retail sales services for virtual products;

Class 36: Financial services, including digital tokens;

Class 41: Non-downloadable virtual product services;

Nevertheless, as each activity or trademark application is unique, it is always advisable to choose, designate, and personalise the wording of the planned trademark so that it provides the most faithful possible reflection of its intended use.

Reacting to breach of trademark in virtual worlds

The appearance of new markets generally comes with new behaviours susceptible to negatively impact rights holders. As with the emergence of the Internet, some viewed the advent of the metaverse as an opportunity to circumvent trademark rights that are opposable in the real world but unprotected in the virtual world.

Therefore, it is not uncommon to see virtual products sold in the metaverse by unscrupulous economic operators under brand names that don’t belong to them.

Such was the case for HERMES, as we mentioned in our newsletter last March, which opposed the sale on the OpenSea platform of “MetaBirkins” NFTs, which were a copy of its iconic BIRKIN bag and its trademark.

In this particular case, HERMES could reasonably count on its brand’s recognition to put a stop to any litigious events.

But what about other trademark holders who don’t enjoy such recognition?

To substantiate the breach of trademark rights, such trademark holders must prove the 3 conventional conditions specified in article 713-2 of the French Intellectual Property Code, i.e.:

– The disputed use of the trademark must take place “in the business world“;
– The disputed use must see the trademark used as a brand (the disputed trademark must be used as a distinctive feature with respect to products and/or services);
– The disputed use of the trademark must create a risk of confusion or association with the brand of the earlier trademark;

If he fails to define these 3 conditions, the owner of an earlier trademark reproduced in the metaverse without his authorisation will have difficulty raising an objection.

The metaverse is destined to keep expanding, with an increasing number of users and economic operators.

That is why you must pre-empt the specific issues this new market raises by adapting your trademark strategy, if necessary.

Our Intellectual Property Team remains at your disposal to accompany you in any new projects for brands destined for exploitation in the metaverse, as well as in terms of the prevention and defence of your rights and interests in those virtual worlds.

Photo by Julien Tromeur on Unsplash
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