May 9, 2023
The IPO explains that the PAN is to inform customers applying for UK trade marks about the IPO’s approach to the classification of NFTs, virtual goods and services provided in the metaverse.
In terms of NFTs, the guidance states that NFTs will not be accepted as a classification term alone because NFTs are inextricably linked to an asset (normally a digital asset) and without an indication of the asset to which it relates, the term is inherently vague. However, the IPO will accept the following type of terminology in Class 9:
- “digital art authenticated by non-fungible tokens [NFTs]”;
- “downloadable graphics authenticated by non-fungible tokens [NFTs]”;
- “downloadable software, namely, [list the type of goods], authenticated by non-fungible tokens [NFTs]”;
- “digital audio files authenticated by non-fungible tokens [NFTs]”; and
- “downloadable digital files authenticated by non-fungible tokens [NFTs]”.
Whilst NFTs relate primarily to digital assets, the guidance explains, it is feasible that they can be used to authenticate anything, including physical goods. Therefore, physical goods clearly defined as being authenticated by NFTs will also be accepted in the appropriate goods class.
NFTs can also be retailed and/or provided via online marketplaces in the same way as other goods and services. In line with that practice, the IPO will accept the following terminology in Class 35:
- “retail services connected with the sale of [e.g. virtual clothing, digital art, audio files] authenticated by non-fungible tokens”; and
- “provision of online marketplaces for buyers and sellers of goods and services which are authenticated by non-fungible tokens”.
Other uses of NFTs will be considered on a case-by-case basis.
As for virtual goods, these are classified in Class 9 because the goods to which they relate consist, essentially, of data, such as digital images. However, the guidance states, in the same way that the term “goods”, or “goods made from x” would not be acceptable for physical goods due to such terms not meeting the requirement for clarity and conciseness, virtual goods will be treated in the same way. Consequently, virtual goods will only be accepted if they are clearly defined. Examples of acceptable terms in class 9 would be:
- “downloadable virtual clothing, footwear, or headgear”; and
- “downloadable virtual handbags”.
In terms of virtual services, including those provided in the metaverse, the guidance states that if a service is capable of being delivered via virtual means, the IPO will continue to accept such services, e.g. “education and training services delivered by virtual means” [Class 41] or “conducting interactive virtual auctions” [Class 35].
As for services provided through the metaverse, the IPO will accept classification in the same class as more traditional forms of delivery, e.g. “education and training services provided via the metaverse” [Class 41] and “conducting interactive auctions via the metaverse” [Class 35].
However, the IPO says, it may not be possible to take the same approach for all metaverse services because the manifestation of that service in the metaverse may not fall in the same class as the traditional form of delivery. In that situation, clarification will be sought by the examiner. To read the PAN in full, click here.