On 1 January 2023, the 12th edition of the Nice Classification concerning the division of goods and services that can be claimed with the application for trademark registration entered into force. This latest edition finally incorporates the words “digital downloadable files authenticated by non fungible tokens (NFT)” (as previously thought) in class 9.
As you know, the c.d. Nice Classification (as introduced by an International Convention signed in Nice in 1957)is a universally adopted codification for the purpose of classifying goods and services to be indicated in applications for registration of trade marks and is divided into 45 product classes or categories. According to this classification, products fall into classes 1 to 34 and services into classes 35 to 45. Each class contains a set of specific terms, which better define the products or services to be protected with each trademark application.
The latest edition of the Nice Classification brings with it an important novelty, as it incorporates the need to give greater clarity to the ways of protecting trademarks with regard to the products and services of the c.d. “Metaverso.”
Following the numerous applications for registration of trademarks filed for specific protection within this new market, the EUIPO (the European Office responsible for the registration of European Trademarks and Models) has provided practical directives for the registration of trademarks with reference to virtual products and NFTs (acronym of Non Fungible Token that is irreplaceable tokens representing the ownership of an asset).
So, according to the EUIPO approach:
1. “virtual products fall into Class 9 because they are treated as digital content or images. However, in itself lacking clarity and precision, the term virtual products should be further specified by clarifying the content to which these virtual products refer (for example, downloadable virtual products, or virtual clothing)”.
2. “the term fungible tokens per se is not acceptable: it is necessary to specify the type of digital element that NFTs authenticate”. In this context, the 12th edition of the Nice Classification includes, in class 9, the term “digital downloadable files authenticated by fungible tokens”.
3. “Services related to virtual products and NFT will be classified in line with established principles of classification for services.”
Given the complexity of the matter and the continuous evolution of the approach of the various Patent Offices and Trademarks of the World to this topic, it is advisable to contact for clarification and technical support-legal professional before proceeding to the registration of trademarks related to “virtual goods” or, in any case, related to the metaverse.
