Wording of the trademark goods and services in the age of new technologies in Web 3.0

22 December 2022
Corinne Thiérache

If the first “blockchain” was conceptualized by Satoshi Nakamoto in 2008, NFTs, “non-fungible tokens”, have been successful since 2017, thanks to cryptokitties. From now on, these new technologies are at the heart of Web 3.0 and trademark registration has become one of the main issues.

The various Offices, and in particular the French National Institute of Intellectual Property (INPI) and the European Intellectual Property Office (EUIPO), are receiving more and more trademark applications concerning these new technologies and are confronted with very often imprecise wording. However, Article R.712-3-1 of the French Intellectual Property Code states that “The goods and services shall be designated with sufficient clarity and precision to enable any person to determine, on this basis alone, the extent of the protection.”. It is clear that it is difficult for all the actors involved (applicants, lawyers, legal advisers in industrial property, legal experts, etc.) to draft sufficiently clear, precise, and adequate wording to cover these new products and services rigorously.

In this respect, on June 23, 2022, the EUIPO came to provide its first clarifications (Virtual goods, non-fungible tokens and the metaverse). The EUIPO confirms that virtual goods fall under class 9. On the other hand, the term “virtual goods” is imprecise and will have to be refused by the different Offices. Therefore, the EUIPO states that it is necessary to specify the content to which the virtual goods relate “for example: downloadable virtual goods, namely, virtual clothes“. Furthermore, the EUIPO indicates that the next version of the Nice Classification will include, in Class 9, the wording “downloadable digital files authenticated by non-fungible tokens“, considering the use of the term “non-fungible tokens” alone unacceptable.

The INPI, on November 15, 2022, aligned itself with the recommendations of the EUIPO and proposed different examples of wording. Thus, in the future, “digital content, i.e., downloadable digital files authenticated by non-fungible tokens [NFT] containing toys and graphic designs to be collected“, as well as “downloadable image files containing works of art authenticated by non-fungible tokens [NFT]“, in class 9, but also “services for the authentication of intangible goods by means of blockchain technology [blockchain]” in class 42[1].

In general, these new technologies in Web 3.0 will essentially be integrated into classes 9, 35, 38, 41 and 42.

From now on, it is up to professionals to adapt to their clients’ requests while making their best efforts to reconcile these new trademark filings with the requirements of the Offices.

[1] A. Drappier, C. Neveu, L.Zambito-Marsala, trademark legal experts, K.Bounif, Head of the Trademark pole, at the Department of Trademarks, Designs and Models of the INPI, « Designation of goods and services in the context of trademark applications relating to NFTs, metavers and digital assets », PIBD 1 1912-II-1, November 15, 2022

Alerion’s lawyers in the IP/IT/Privacy Department can assist their clients in all matters related to intellectual property and in particular in determining strategies for Web 3.0 related trademark registrations.

Corinne Thiérache, Partner Lawyer, and Océane Desplands, Master II Intellectual Property and New Technologies (UGA)