Protection of Virtual Goods and Non-Fungible Tokens: the EUIPO’s approach to Classification

The European Union Intellectual Property Office (“EUIPO”) has reportedly seen a continual surge in trade mark applications filed with it covering virtual goods and non-fungible tokens (“NFTs”). In response to this, as from 1 January 2023, these terms will now be specifically referred to in the upcoming new edition of the Nice Classification (the 12th edition), an international classification system for goods and services used by the EUIPO and most other trade mark offices for the registration of trade marks.

“Virtual goods” are being treated by the EUIPO as digital content or images under Class 9. This follows its recent guidance, where it explained that the term “virtual goods” on its own lacks clarity and precision and consequently, would not be acceptable for registration. Thus, when attempting to include “virtual goods” within a European Union trade mark application, it is important to provide additional and more specific detail by stating the content to which the virtual goods relate, for example, “a downloadable virtual good, namely virtual clothing”. Otherwise, without this added detail, the applicant may run the risk of its application being unnecessarily halted or even possibly refused in part.

Class 9 will also incorporate the term “downloadable digital files authenticated by non-fungible tokens”, as inspired by the United States Patents and Trademarks Office. NFTs are presently being treated by the EUIPO as unique digital certificates registered in a blockchain which authenticate digital items but are distinct from them. Similar to the case with “virtual goods”, classifying the term “non-fungible tokens” on its own, without further detail, is not acceptable. The item authenticated by the NFT does also need to be specified; for example, “downloadable music authenticated by NFTs” in class 9 or “providing an online virtual environment for trading virtual art and virtual art tokens” in class 35.

The increasing volume of these types of applications shows that NFTs and virtual goods generally are increasingly being perceived to be a valuable item for brand recognition and protection. Businesses and service providers operating in this sphere should therefore take these latest developments as welcome encouragement, as they do highlight that trade mark protection for digital items is recognised and regularly being granted. When filing, care does need to be taken to ensure that the relevant terms are sufficiently clear and precise in accordance with the above approach.