The last year has seen a huge rise in the number of trade mark applications for virtual goods and services, fuelled by the development of the metaverse and other complex online environments. Brand owners should now be considering the merits of protecting their key brands in the virtual world.

Although not here yet, the metaverse - a proposed 3D virtual online world(s) – is expected to reach a billion-strong population by the end of the 2020s. It is likely to bring virtual 3D online marketplaces, with customisable avatars consuming nearly all the goods and services we do in the 'real world'– virtual handbags, shoes, home décor, education, meeting spaces, social events – and more. It is likely to offer a host of new opportunities for brand owners to monetise and promote their brands. 'Proto-metaverses' are already in operation, with some video games offering a mix of gaming and 'real world' type interactions.

Brand owners should now be considering the merits of protecting their key brands in the virtual world. Although trade mark registrations for 'real world' goods and services might offer some protection against the use of the same or similar brands in the virtual world, the position (and law) is not straightforward. For example, can there be trade mark infringement if there is no actual 'product'? Furthermore, obtaining registered protection for virtual goods or services should allow the registrant to bring a so-called double identity attack (use of identical mark on identical goods or services), bolstering their position.

Obtaining registered protection for virtual goods and services should not only aid future enforcement, but also help ward off third party applications and use and facilitate future licensing opportunities. (Already third-party non-rights holders are filing for, and using, existing brands in the virtual space.) The key class to cover will usually be 9, but classes 35, 41, 42 and others might also be important (although issues of use will need to be considered). Careful consideration as to which jurisdictions to file in (given the potentially borderless nature of the internet) will also be needed.

Going forward, rights holders will also need to consider how to police a more complex online environment, where it will not only be more difficult to detect infringements but there will be PR and reputational issues to consider.

To discuss this topic in more detail, please get in touch with our Brands & advertising team. To read more on the Metaverse, check out our recent article on the legal challenges and opportunities it presents or delve into our look ahead at the video games industry in 2022.