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.

This article was first published by MARQUES on Class 46 (linked here).