The Office has released some guidance on the classification of items relating to "virtual goods" and "non-fungible tokens (NFTs)".

This is exciting news for any trade mark practitioner who has not been living under a rock for the past year. NFTs are a new form of digital asset. Using blockchain technology, they provide proof of ownership for digital or physical objects. And the Metaverse itself has been covered widely enough in the media so that it no longer requires an explanatory note.

The proper classification of virtual and NFT-related goods as well as other assets often associated with the Metaverse has been a hot topic of discussion for months. Different theories have evolved and been talked about at international trade mark conference and, of course, online. Will virtual goods simply form a sub-category of the IRL goods contained in a particular Class? Or should a separate Class emerge for products in the virtual world?

Perhaps not. The EUIPO's position, at least, seems to point in a different direction. The Office confirms that it will be taking the following approach:

• "Virtual goods are proper to Class 9 because they are treated as digital content or images. However, the term virtual goods on its own lacks clarity and precision so must be further specified by stating the content to which the virtual goods relate (e.g. downloadable virtual goods, namely, virtual clothing).

• The 12th Edition of the Nice Classification will incorporate the term downloadable digital files authenticated by non-fungible tokens in Class 9. NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital items but are distinct from those digital items. For the Office, the term non fungible tokens on its own is not acceptable. The type of digital item authenticated by the NFT must be specified."

Moreover, the EUIPO points out that services relating to virtual goods and NFTs "will be classified in line with the established principles of classification for services."

Based on initial reactions on social media, practitioners clearly appreciate the fact that the EUIPO has published this timely clarification. And while the classification of "virtual goods" in Class 9 will not come as a surprise, the EUIPO's view on NFTs will probably spark further debate (e.g. regarding NFTs tied to physical goods).

One thing is certain: properly classifying all the things consumers may or may not enjoy in the Metaverse will keep the Office and trade mark lawyers busy for some time to come. With the Office "increasingly receiving applications containing" the items mentioned above, tricky trade mark conflicts may arise in Class 9. After all, who is to say whether "virtual sneakers" and "virtual burgers" are similar?

The EUIPO's above approach (linked here) is set out in the 2023 draft Guidelines. Stakeholders are invited to submit their comments by 3 October 2022.

MARQUES is hosting the fourth Luxury Brands Symposium at the Grand Hotel Baglioni in Florence on 20 and 21 October 2022.

The Symposium will look at the various lives of a luxury brand. Panels will cover topics including cross-over collaboration, sustainability and upcycling, and the Metaverse.

The programme includes a Champagne Reception and Dinner on the evening of 20 October.

Registration is now open on the MARQUES website, where you can also see full details of the programme, terms and accommodation options.

Registration is €800 (MARQUES members) or €950 (non-members).

The previous Luxury Brands Symposiums in Zurich, Hong Kong and Milan have proved very popular and demand for this event in Florence is likely to be high so act now to reserve your place!

Photo of Florence taken from the Grand Hotel Baglioni website

The latest issue of EUIPO’s Alicante News includes an article titled “From food and wine to … textiles and crafts: a short history of GIs”.

The article is written by Professor Eleonora Rosati of Stockholm University. She states: “GIs are not just IP. They are also tools aimed at supporting the objective of traditional and rural development and address consumers’ growing demand for authenticity and sustainability.”

It traces the history of GI protection dating back to the regulation of the production of blue Roquefort cheese in France in 1411 through developments in the 1800s and 1900s.

Protections of indications of source or appellations of origin have also been spelt out in international treaties such as the Lisbon Agreement and TRIPS Agreement, and in trade agreements.

In the EU, Italy currently has the most registered GIs with nearly 900, and several cases concerning GIs have been decided by the CJEU.

Since 2020, GIs registered in Europe and beyond can be seen on GIview (see screenshot). It includes more than 5,200 GIs protected in the EU and more than has more than 40,000 worldwide entries.

MARQUES follows GI developments closely, thanks to the work of the GI Team. Team members monitor developments worldwide and prepare information and events for MARQUES members (including occasional “tastings” at MARQUES conferences!)

In spring this year, a legislative proposal to extend GI protection to textiles and crafts in the EU was published. 

Ortrun Günzel of df-mp Dörries Frank-Molnia & Pohlman in Germany, Chair of the GI Team, says: “There is a strong need for protecting non-agricultural products by means of a GI. We have long been waiting for the European Commission’s decision to extend GI protection and thus very much welcome this overdue legislative proposal.”

You have until this Thursday 30 June to take advantage of the Early Bird Discount for the 36^th MARQUES Annual Conference, which takes place in Madrid from 20 to 23 September this year.

The Annual Conference is proving extremely popular with over 500 registrations already received. You are encouraged to book early to avoid disappointment.

The theme is “Celebrating Marks” and the Conference will be held fully in-person for the first time since 2019.

It includes a full social programme with functions each evening, including the Gala Dinner and Dance at the Palacio del Negrelejo on Thursday night.

Find out more

You can find out more about the Conference in the latest episode of the Talking MARQUES podcast, which is available here.

It features MARQUES 1^st Vice-Chair Antony Douglass, 2^nd Vice-Chair Claudia Pappas and Claire Lehr of the Programming Team.

In the podcast, they discuss the Conference theme, highlight some sessions and workshops of interest and discuss the opportunities for networking. They also look forward to future MARQUES events and provide tips for anyone considering attending.

Registration

To book now and take advantage of the Early Bird Discount, visit the dedicated page on the MARQUES website.

You can also find information there about accommodation, non-residential and modular registration, the social programme and guided learning credits.

WIPO is hosting a webinar titled “Youth and Intellectual Property: a view on WIPO services and initiatives” on Tuesday 28 June at 15.00 (Geneva time).

The webinar aims to inspire and encourage young entrepreneurs to access and use IP services through best practices in business development.

WIPO says that young entrepreneurs will be able to learn from first-hand peer experience and to benefit from the know-how of the WIPO team. A series of support activities will also be offered to registered participants.

Topics to be covered include:

• Why IP is important to young entrepreneurs and how it is beneficial for their business
• Initiatives for young entrepreneurs and SMEs: scale-up your IP with the IP Diagnostics
• Protecting your trade marks, industrial designs and geographical indications internationally with the Hague, Madrid, and Lisbon systems
• Protecting your inventions internationally with the Patent Cooperation Treaty (PCT)
• Creative industries and IP economy

The webinar will be in English with interpretation into French and Spanish. It is free of charge and you can register on WIPO’s website here.

Class 46 readers might like to share this information with any colleagues, clients or young entrepreneurs who may be interested in the webinar.

Image taken from WIPO's website

The next webinar on the latest developments in EUTM and RCD-related case law will be on Tuesday 21 June at 10.00 central European time.

The webinar provides an overview of key decisions from the EUIPO Boards of Appeal and judgments of the EU General Court and EU Court of Justice during the second quarter of 2022.

It is part of EUIPO’s regular Tuesday webinar series.

New case law webinars are presented each quarter. Previous and planned broadcasts can be seen in the Learning Portal Calendar.

Anyone interested in finding out more about recent cases can register for next week's webinar on the EUIPO website here.

How much do you know about the evolution of trade marks? An article in the June 2022 edition of EUIPO’s Alicante News provides an overview of the history from the Middle Ages to today’s wide range of marks.

The article is available to read on EUIPO’s website here. It explains the importance of the Vikings’ Ulfberht mark, the UK Trade Mark Registration Act and the EU trade mark system.

The article concludes: “A careful interpretation and application of trade mark principles, including the conditions under which a sign can be protected, is necessary for this area of IP to continue to serve its purposes to protect traders and consumers alike – now and in the future.”

The article is part of a series published by EUIPO on the history of IP. The other articles cover:

• IP from the Ancient to the Modern Age
• IP in the 19^th century
• IP in the 20^th century
• IP and the challenges of technology
• IP in the age of internet

They can all be found on EUIPO’s website here.

The picture is taken from EUIPO’s website.