Trademark Use in the Metaverse
Recently, I received a question: what should one be aware of regarding the use of trademarks in the metaverse? Here are some tips to answer the question.
(1) Use of trademarks on conventional e-commerce sites
First, as the first step in understanding trademark use in the metaverse, let us consider conventional e-commerce sites.
For example, a consumer browsing an e-commerce site sees a pair of shoes displayed with the Nike logo and decides to click the “Purchase” button. Then, the shoes are delivered to the consumer’s home.
In this way, on e-commerce sites, a trademark is displayed together with the relevant goods, and the final product is obtained in the real world. This is the conventional form of trademark use on the Internet.
In this case, from the perspective of trademark law, the Nike logo is used in connection with Class 25 “footwear” (goods in the real world).
(2) Use of trademarks in the metaverse
On the other hand, in the metaverse, there are cases where the final goods or services are obtained in the real world, and cases where they are not.
In the former case, when a consumer purchases shoes displayed with the Nike logo at a virtual store in the metaverse, the retailer or manufacturer operating the store ships actual shoes, and the consumer receives them at home. In this situation, it is no different from (1) e-commerce sites. That is, the Nike logo is used in connection with Class 25 “footwear” (goods in the real world).
In the latter case, the consumer purchases shoes displayed with the Nike logo as virtual goods in the virtual store of the metaverse. Shoes as virtual goods are shoes used only in the virtual world, also referred to as “virtual sneakers” or “digital sneakers.”
In this case, from the perspective of trademark law, unlike e-commerce sites, the trademark is not used in connection with Class 25 “footwear” (goods in the real world) but, for example, with Class 9 “downloadable computer programs featuring footwear” (goods in the virtual world). In other words, the goods to which the Nike logo is applied are, strictly speaking, data.
(3) Points to note regarding trademark use in the metaverse
In light of the above, what one should be aware of regarding trademark use in the metaverse is that holding trademark rights for goods in the real world may not be sufficient. If the goods handled in the metaverse are virtual goods, it is necessary to obtain trademark rights for the corresponding designated goods, such as Class 9 “downloadable computer programs featuring footwear.”
What happens if no trademark rights are obtained for virtual goods?
For example, suppose a third party creates virtual footwear in the metaverse and sells it using the Nike logo without authorization. In this case, it is currently considered that Nike cannot exercise its trademark rights under Class 25 “footwear” (real-world goods) against the third party. In other words, Nike cannot enforce its rights under trademark law against virtual sneakers or digital sneakers sold in the metaverse.
For this reason, overseas manufacturers such as Nike and Converse are moving to secure trademark rights in Class 9 and other classes.
(Reference: “WIPO Magazine – Trademarks in the Metaverse” https://www.wipo.int/wipo_magazine/en/2022/01/article_0006.html)
(4) Others
In the future, if virtual goods become very widespread and it becomes common for shoe manufacturers to sell virtual footwear, a different judgment from (3) may emerge. In other words, there is a possibility that trademark rights in Class 25 “footwear” could be deemed enforceable against virtual footwear.
