The Metaverse is a new place of exchange, not only for playful activities but also for commercial ones. Brands and products known on the traditional markets are offered to Metaverse users.

A new trend is to use the Metaverse as a base for launching new products, in particular through a NFT (Non Fungible Token) which represents the virtual image of a product offered for sale on the traditional market. Thus, the purchaser of a NFT representing the image of a product, will be able to get the product upon presentation of the NFT, the NFT being used as proof to establish the property of the purchased product, proof of authenticity and the right to have the product delivered on request.

There is thus a certain porosity between the traditional markets and the virtual world of Metaverse.

Therefore, how to prevent the use of a trademark or a design in the Metaverse? Conversely, how to protect a trademark or a representation of a product which has been created in the Metaverse in order to prevent third parties from using it on the traditional markets?

Given this new economic challenge, which is the strategy to protect trademarks and creations?

Trademarks are registered for the products in respect of which they are intended to be used, e.g. clothing, shoes, perfumes, sports goods. Is this protection sufficient for a trademark use in the Metaverse?

The use of a trademark in the Metaverse can be done in different ways:

  • Use for the promotion of a product sold on the traditional market, and/or
  • Use for the offer or sale of a NFT representing the virtual image of a product, on the Metaverse,

A company could offer for sale with the same mark both the real product and the NFT representing the virtual image of this product.

In such a case, the protection of the trademark must be adapted to the market on which it is to be used, this use being a use in the course of trade. Thus, it will be appropriate to extend the protection of the trademark to goods and services offered on the Metaverse, such as digital images of footwear, computer programs, services for the presentation of goods through virtual images for sale and services for the presentation of virtual images of goods for recreational or educational purposes.

The trademarks used on the Metaverse will also have to be protected against their use in the virtual world and on the traditional market too.

As regards designs, if they are new and have an individual character, we shall have to examine the opportunity to register them not only for the physical product (e.g. for shoes) but also for the digital representation of the image of the product (e.g. the virtual image of the shoe).

Designs may also be registered for the representation of avatars, virtual environments, and also logos when these are used for decorative purposes in the Metaverse.

Watch is also recommended to ensure that third parties are not using the trademark or design without the owner’s consent.

Watch of marketplaces such as Amazon or Alibaba must be complemented by a watch of NFTs’ sales platforms, such as OpenSea, in order to identify and stop the sale of NFTs representing virtual images of trademarked products, often proposed under accounts identified with the owner’s trademark, without its consent.

Lavoix remains available to discuss the above at your best convenience.

Published On: 11 July 2022Categories: PublicationsTags:

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