Prepare to protect your trademarks in the metaverse

A new dimension is coming that will force rights holders to adapt to the virtual world as well.

The metaverse, although not yet a reality, is set to be a parallel world that will have as many details, objects, places, and experiences as the real world and will provide the ability to live in multidimensional spaces. As a worthy successor to the smartphone – an extension of one’s own body for many – it implies that it will be possible to watch movies, listen to songs, buy clothes, cars, houses, attend events and concerts… with a corresponding impact on industrial and intellectual property.

In short, and although it may still seem a bit bizarre and science fiction, we will inhabit worlds or dimensions that will have as many details, objects, places, and experiences as the real world, and we will have the ability to live in multidimensional spaces.

In this regard, one of the most curious things that Mark Zuckerberg points out is the ability we will have to buy goods and hold ownership of them officially, not as has been done so far in the online environment, where the platform had the ownership of the product.

In the metaverse we will have the capacity to be holders of rights, obligations, and all that this entails. It is precisely this aspect that will have a direct impact on the economy, in general, and on the way intellectual and industrial property rights are viewed and regulated.

We will inhabit worlds or dimensions that will have as many details, objects, places, and experiences as the real world.

As far as trademark law is concerned, this new dimension will mean, among other things, that different companies will identify themselves and make their products and services available to the public in this new market. Their protection will therefore have to have the same importance as in real life.

And as for their defense against infringement by third parties, it will be just as important, or even more so, to continue to take dissuasive measures against the non-consensual use of trademarks by third parties.

In short, broadly speaking, the main purposes that trademark owners will have when participating in the metaverse will be twofold: on the one hand, to promote their products or services, and on the other, to sell or monetize them in this dimension. There are many luxury brands that are already betting on this way of advertising their products.

For example, Balenciaga launched its Fall 2021 collection through a video game and has collaborated with the gaming platform Fortnite on a collection of digital masks for gamers; and Ralph Lauren recently announced a collection for Roblox, Metaverse Holiday Experience with virtual Polo stores on this platform.

On the other hand, some of the giants in the textile industry, such as Nike, Abercrombie & Fitch, or New Balance, have already started to apply for trademark registrations for products that until then were reserved for companies in the audiovisual and software sector. In other words, downloadable virtual products.

From the EU’s point of view, trademarks registered specifically for virtual goods may allow their owners to invoke the so-called “double identity attack” against virtual counterfeits (i.e., identical trademarks for identical goods).

In case of conflict, the trademark owner could pursue virtual infringers without having to demonstrate a likelihood of confusion on the part of the relevant public. Additional issues regarding international jurisdiction, the (in)applicability of exhaustion rules and use to preserve rights in the metaverse will have to be raised at a later stage.

In conclusion, and by way of summary, what is happening with the incipient metaverse we already experienced in the 1990s with the beginning of the Internet, which turned everything upside down and generated a great uproar as to how a globalized reality that does not understand borders would affect industrial property rights, which are governed by territoriality criteria, but which forced the gradual emergence of criteria according to which traditional trademark law could be applied.

This new dimension will not only require trademark owners to adapt to this new way of exploiting and defending their trademarks, but that governments and international organizations will also have to do their part to update the regulation of this new reality.

In the meantime, it might not be a bad idea for entrepreneurs and individuals, in anticipation that this regulation will take longer than necessary, to go ahead and protect their trademarks for these virtual products as the giants are already doing.

 

Article written by Carmen Romero and published 8 April, 2022 in https://www.elespanol.com/invertia/opinion/20220408/marcas-preparan-protegerse-metaverso/660803929_12.html

*** Carmen Romero is an attorney at Balder.