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  • Rebekka Schiffer, LL.M. & Svenja Schwandt

Ready for the virtual world?

For most of us, the metaverse is still a mystery and its acceptance and popularity unknown. For brand owners, it is advisable to act as early as possible to be on the cutting edge.

The metaverse is a virtual reality construct where reality and the online 3D virtual environment overlap. The goal is that anyone can join the metaverse to work, shop, socialise, play games - the scale and applications are almost limitless.

But what does this mean for brand owners?

In recent weeks, companies around the world are registering trademarks not for real products, but for virtual products and retail services with virtual products. These are increasingly companies for consumer goods such as clothing, electronics, perfumes, food. These trademark applications indicate that companies are preparing to enter the metaverse and offer a virtual reality shopping experience. In any case, these trademark applications also serve as a defensive strategy to counter possible trademark infringement by third parties in the metaverse.

The metaverse creates virtual environments that mimic the real world, where participants can handle, wear and touch branded products. Would the use of a trademark in this environment infringe the trademark owner's rights for these equivalent products in the real world? That is, does the trademark owner have to separately apply for a trademark for downloadable virtual products if he is already the owner of these products in reality?

This question has not yet been judicially examined, but as a practical matter, it can be assumed that a similar procedure and logic as for online infringement will apply.

Here is a metaverse scenario for consideration:

Someone creates a Metaversum dating experience, and users can purchase clothing items as Non-Fungible Tokens (NFT) to wear on their virtual date. The date takes place in a virtual café, and magazines can be read there. Some of the NFTs offered for sale are luxury branded clothes, the café belongs to a well-known chain, the newspapers are international (all registered trademarks of third parties). Does the promotion and sale of these NFTs infringe the trademark rights that appear on the clothes, the café and the newspapers? If we compare this to online retail, the answer is probably yes. On the other hand, software or downloadable software (which arguably includes downloadable virtual products) is not generally considered to be products with a similar description to, say, clothing.

"This suggests that it is far safer and more prudent for trademark owners to consider extending their trademark applications to cover virtual products and to check their existing trademark portfolio for pre-existing protection," advise Rebekka Schiffer, attorney and partner at COHAUSZ & FLORACK, and Svenja Schwandt, patent attorney at COHAUSZ & FLORACK. The firm specialises in trademark law and supports trade mark owners in securing their rights and taking the step into the metaverse.

If you have any questions, please do not hesitate to contact us.

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