Updated guidance from the UKIPO on NFTs, virtual goods and virtual services

The UK IPO has published updated guidance on UK trade mark classification of non-fungible tokens (NFTs), virtual goods and virtual services, including those in the metaverse.

When applying for a UK trade mark, applicants must select the class of goods or services they wish to register the trade mark in respect of. Class 9 encompasses various scientific and technological goods, including NFTs and virtual goods.

The UK UPO guidance has clarified that simply stating “non-fungible token” or “virtual goods” in class 9 will not be sufficient. Instead, the specific type of good the trade mark is protecting needs to be clearly defined in the trade mark specification.

NFTs

NFTs are defined as “a unique unit of data that links to a particular piece of digital art, music, video etc. and that can be bought and sold”. The NFT is a token of data that represents ownership of an digital or physical asset such as a painting, a virtual clothing item in a video game or a GIF. It is important to note that owning an NFT does not give ownership of the underlying IP in the asset, for example copyright in a painting.

The UK IPO’s guidance states that in addition to stating “non-fungible token”, the trade mark applicant must state the asset to which the NFT relates. Acceptable terminology in respect of digital goods in class 9 would be “digital art authenticated by non-fungible tokens [NFTs]” or “downloadable graphics authenticated by non-fungible tokens [NFTs]”.

The guidance also elaborates on physical assets, such as artwork (class 16 printed matter) and handbags (class 18 bags, leather). The following terminology would be acceptable in relation to artwork: “artwork, authenticated by non-fungible tokens [NFTs]”.

Class 35 covers advertising and retail services. As such, if NFTs are advertised for sale on an online marketplace or similar, the IPO would accept the following terminology: “retail services connected with the sale of [e.g., virtual clothing] authenticated by non-fungible tokens”.

Virtual goods

The guidance for virtual goods is relatively straightforward and slots into class 9 as these goods primarily consist of data. However, they will only be accepted if they are clearly defined i.e., “downloadable virtual clothing”. Trade mark applicants should avoid vague terms such as “virtual goods” or “virtual goods made from …”.

Virtual services (including the metaverse)

If a service is provided by virtual means, such as educational services via internet-based video-conferencing platforms, they can be included in the relevant class as “education and training services delivered by virtual means” (class 41).

In terms of the metaverse, services that can be delivered by virtual means could also be delivered inside the metaverse.  Acceptable terms include “education and training services provided via the metaverse” (class 41).

Some services may not be as clear cut when determining whether they can be provided inside the metaverse i.e., food and drink services and accordingly will be assessed on a case-by-case basis by the examiner.

Comment

Prior to this recent guidance, NFTs and virtual goods were largely accepted to fall into class 9, however using the correct terms in the trade mark application was not always straightforward.

This guidance provides clarity to trade mark applicants and ensures that the correct terms are used in the first instance. Once a trade mark application has been filed, it is not always possible to add additional terms, therefore emphasising the importance of getting things right the first-time round.

Further, the new guidance can help in the event you need to defend a trade mark against an infringer. For example, if you have protection for “digital art” but not “digital art authenticated by non-fungible tokens [NFTs]”, if someone sells an NFT of your digital art without permission, enforcing your trade mark against them may prove more difficult.

If you require a trade mark for your brand or business, please get in touch with one of our specialist IP solicitors who will be glad to assist.

Written by Saad Khan – Trainee Solicitor