The protection of trade marks in the metaverse is still a hotly debated topic. Not only the EUIPO is faced with an increasing number of trade mark applications for "virtual goods" and NFTs, but also the national offices are examining more and more of such applications, and quite a few trade marks to be used in the metaverse or for NFTs have already been registered.

In July 2022, the EUIPO released some guidance on the classification of items relating to "virtual goods" and "non-fungible tokens (NFTs)" (see our previous article here). The Office's approach is set out in the 2023 draft Guidelines which are expected to enter into force end of March 2023.

The EUIPO now had to deal with a somewhat different case of ‘metaverse trade marks’: the protection of the term ‘Metaverse’ as a trade mark for physical goods.

What has happened?

In February 2022, a Polish company filed applications for EU trade marks for

• METAVERSE DRINK (for various drinks in class 32)
• METAVERSE FOOD (for in classes 5, 29, 30 and 32 such as pharmaceutical & vitamin preparations, nutritional food supplements, and various food and drinks, i.e. energy bars, chips, crisps, milk and hamburgers.

The EUIPO rejected both applications due to lack of distinctiveness. In his appeals, the applicant argued that the applications did not relate to virtual but to physical goods. According to the applicant, this is crucial for the assessment of the mark's distinctiveness, since the trade mark cannot be applied to virtual goods which cannot be transferred to the real world. He further argued that Metaverse is defined strictly as a category in the virtual world and should not be confused with all other online activities: Online shopping of physical goods is according to the applicant’s argumentation not an entrance to the Metaverse world. He finally referred to his previous applications for METAVERSE ENERGY – two trade marks that were registered by the EUIPO for goods in classes 5 and 32. The refusal to register the mark METAVERSE FOOD would therefore be inconsistent with EUIPO’s guidelines and practice.

The decisions of the Board of Appeal

The Board of Appeal dismissed both appeals (METAVERSE DRINK: R2356/2022-2 (decision available in Polish only), METAVERSE FOOD: R2357/2022-2). According to the Board, the EUIPO’s expert defined the term METAVERSE as a virtual space and the expression METAVERSE FOOD as a whole “food in a virtual space” (and METAVERSE DRINK accordingly “drink in a virtual space”).

The Board of Appeal further considers “that the virtual world (Metaverse) is not a well-defined and distinct category in the virtual world. Nor is the borderline between the real world and the virtual world clear.” The Board therefore rejected the argument that the Metaverse is limited to a specific virtual world: The Metaverse “is not just avatar, alternative reality and virtual products. The distinction between Metaverse and other forms of online activity is blurred. […] Companies use Metaverse to promote their goods and brands which later translate into increased sales of their goods in the real world.” In the Board’s opinion, the Metaverse is therefore just another version of e-commerce. The Board of Appeal concludes that the relevant public will perceive METAVERSE FOOD as indication that food (in the form of goods in classes 29 and 30) and pharmaceuticals, vitamin preparations or food supplements (class 5) are offered or can be purchased in a virtual space, an information devoid of any distinctive character (the same applies to METAVERSE DRINK).

Finally, the Board of Appeal rejected the argument that the EUIPO had registered other trade marks containing the term METAVERSE. It notes that “there is no uniform practice of the Office”. However, subject of the proceedings were only the decisions appealed against and “a potential error made in other proceedings shall not give rise to the registration of a sign which does not meet the conditions laid down in Article 7 of the EUTMR.”

Conclusion

According to these decisions, trade marks containing the term “metaverse” cannot be registered for goods and services that can be offered online due to lack of distinctiveness. The problem remains that some trade marks containing the element "Metaverse" have already been registered by the EUIPO for such goods, like for example “Metaverse” for – among other things - backpacks, school bags and suitcases (class 18) or “MR METAVERSE metaverse business consulting” and “METAVERSE MADNESS” for clothing, headgear and footwear (class 25) and the applicant’s trade marks “METAVERSE ENERGY” in classes 5 and 32. Following the Board of Appeal’s reasoning with respect to “METAVERSE FOOD” and METAVERSE DRINK”, the degree of distinctiveness of these marks is questionable. We will have to wait and see how the EUIPO will position itself in further cases but it seems clear that no entity will be entitled to monopolize the term "METAVERSE", as such, as a trade mark within the EU.