Written by: Eloise Turnbull, Litigation Solicitor
In our fast-evolving digital era, the virtual landscape is increasingly becoming a pivotal domain, making it essential for creators to secure intellectual property rights for their virtual assets.
Technologies are reshaping how we interact with the internet. They are challenging the boundaries between our online activities and real-life experiences. While these innovations offer opportunities for businesses, they also present complex legal challenges that demand attention.
For a considerable period, questions loomed about the adequacy of current trademark registrations for physical goods and services in safeguarding brands online. Over the past year and a half, various intellectual property (“IP”) bodies across the globe, including the European Union Intellectual Property Office, Korean Intellectual Property Office, United Kingdom Intellectual Property Office, and World Intellectual Property Organization, have taken strides to provide clearer guidelines. These guidelines offer insights into the classification and description of goods and services linked to these evolving technologies.
Australia Joins the Conversation
Now, IP Australia has released its own comprehensive guidance document titled “Trademark classification guidance: Virtual goods, metaverse, NFTs, and blockchain.” Although this guidance benefits businesses operating within Australia, it’s important to recognize that IP Australia will continue refining its classification rules to align with international trends and actions of other intellectual property offices.
What does this mean?
The guidance is structured into four (4) key sections, each addressing a specific aspect of these emerging technologies:
- Virtual Goods: IP Australia classifies virtual goods in “class 9”, understanding them as data objects used in online environments. However, it emphasises precision by describing such goods to avoid overly broad claims that might lead to monopolistic practices. Specificity, such as “downloadable virtual clothing” in class 9, is recommended. An example of this is virtual gaming skins, digital items used within video games to alter the appearance of in-game characters. These goods are sold through in-game stores but are covered by Intellectual Property classification to protect designs and distribution rights.
- Metaverse and Virtual Environments: IP Australia opts for the term “virtual environments” over more specific ones like “metaverse” or “web3,” because its more applicable to a wider range of contexts. The guidance suggests evaluating services within virtual environments on a case-by-case basis, considering their impact on the real world.
- NFTs: IP Australia sees NFTs as a form of certification, rather than goods or services themselves. Claims solely for “NFT” or “non-fungible token” are insufficient. Instead, precise descriptions like “downloadable digital image files authenticated by non-fungible tokens [NFTs]” are recommended.
- Blockchain: IP Australia approaches blockchain as a technology integrated into goods or services, rejecting standalone claims for “blockchain.” Claims related to blockchain should be framed in technology-centric classes like “class 9” for “computer software” or “class 36” for “electronic funds transfer”.
Looking Ahead
Forward-thinking organisations are already strategising how to protect and leverage their IP rights in this digital landscape. Addressing these challenges proactively ensures readiness for what’s coming. Businesses, especially those venturing into the metaverse and digital spaces, are encouraged to align their trademark portfolios with IP Australia’s guidelines.
Contact our team at Greenhalgh Pickard for integrated advice from our Commercial, Employment and Litigation Solicitors.
Disclaimer:
The information contained in this article is for general informational purposes only and is not intended to provide legal advice or substitute for the advice of a professional. This information does not consider your personal circumstances and may not reflect the most current legal developments. Should you need advice, please contact our firm for targeted information relating to personal your situation.
Greenhalgh Pickard’s Litigation Team
