World Intellectual Property Day is celebrated on April 26, this year with the theme chosen by the World Intellectual Property Organization (WIPO): “IP and Youth: Innovating for a Better Future”. The relationship between youth and IP has at least two meanings. In a sense, young people are innovating and gaining protection because of IP. On the other hand, young people are the main recipients of IP-protected innovations. It is, above all, in this sense of relationship that the sub-theme of brands lies in the metaverse.
What is the metaverse?
The creation of the term “metaverse” is usually attributed to Neal Stephenson, who first used it in his science fiction novel Snow Crash, resulting from the juxtaposition of the words “meta” and “universe.” This is the metaverse, a universe that is beyond anything. That something is the non-digital world, so that the universe is digital.
But if the metaverse was a digital space, all digital spaces would be covered by the concept, including any email service or online store. If the metaverse is a universe, then it has the ability to replace the other universe, which is not digital. Therefore, the metaverse should be considered a digital space in which it is possible to practice all (or almost all) of the activities that are possible to practice in the non-digital universe. The metaverse, by this definition, does not even exist. However, the reality is close, already.
The main examples are virtual reality like Second Life, in which the user can perform various activities, through their representation, the avatar. In this virtual reality it is possible, for example, to buy, among other things digital goods, animals, art, vehicles and clothes for the avatar.
Virtual real estate is still a reality. In 2021, the value of digital land acquisition, in places like Sandbox, Decentraland, Cryptovoxels and Somnium, has exceeded US $ 500 million (https://www.cnbc.com/2022/02/01 / metaverse-real-estate-sales). -top-500-million-metametric-solutions-says.html), and many of these buyers have partnered with architectural services to build their virtual properties and buy digital furniture and arts to decorate.
Other examples of metaverse approaches, where the largest number of users are, especially young people, are games such as World of Warcraft, Fortnite and Roblox. Together, these virtual spaces currently have about 450 million users. If they were a country, they would be the third largest in the world by population. Taking this fact into account and since it is possible to sell goods and provide services in these digital spaces, many entities are interested in exercising their freedom of economic initiative in these spaces. To do this, the entity needed signs that would allow consumers to distinguish their products and services from those of other entities. That is, these entities need to use tags.
Trademarks in the “metaverse”
The use of trademarks in these digital spaces results in new legal situations. How can an entity protect its brand in these spaces? Can an entity that already owns a trademark registration use it safely in those spaces and prevent third parties from using it? The answer to these and other questions arises from existing law, including the terms and conditions that users accept when using these platforms and which may, if necessary, provide their mechanisms for action against infringements.
The answer to the first question, in Portugal and in most European Union countries, is clear. Any entity that intends to be the owner of an exclusive right to use a certain trademark must register it, since the right to a trademark, in those jurisdictions, results from registration. The Law applies to any of the above-mentioned approaches to the metaverse, as in any digital space. If it is illegal to sell products under the trademark of another entity in an online store, then it is the sale of those products in any virtual reality.
It is also questioned whether an entity that is already the owner of a trademark registration will be able to use it, without risk, in those spaces, and whether it will be able to prevent third parties from using it. For example, will a brand to identify clothing be protected against its use by users of these spaces to identify virtual clothing? The answer, in principle, is no. The trademark rights resulting from the registration are limited to the products and services covered by the registration and the like. If a trademark is registered for the garment, its protection must not cover the virtual garment, which is not a garment or similar product, but a digital bond. However, the answer may be different if the trademark in question has the legal status of a prestigious trademark. For these trademarks, the Law provides that their protection is not limited to the products and services covered by the registration, and the owner may prevent their use in relation to other products and services, provided that with their use, the third party seeks to take undue advantage of the distinctive character or prestige of the brand, or could harm them.
An entity that owns a trademark without a prestigious status, as the vast majority are, if it intends to exploit in these new areas, must obtain a new registration covering digital goods or services.
This is already happening. The American NIKE, despite being a prestigious brand, and therefore having less need to do so, intends to sell virtual products, last year it registered several NIKE brands to identify, among others, the products “downloadable of virtual goods, worth namely, computer programs with footwear, clothing, toiletries, glasses, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in virtual online worlds “and the services” of shops retailers with virtual goods, namely footwear, clothing, hats, sports bags, backpacks, sports equipment, art, toys and accessories for online use. ” It also registered the NIKELAND brand to identify, among other things, “virtual reality services and interactive games provided online by a global network of computers and across various wireless networks and electronic devices,” which is currently used to identify sports space and virtual games. in the above-mentioned Roblox game.
In the future
The growth of these realities approaching the metaverse, in the last two years, will be driven by the pandemic. If physical spaces were limited, virtual spaces would be beneficial. However, economic agents have to take precautions and protect their brands well, obtaining registrations for virtual goods and services. Despite the end of the pandemic, the trend should be the continuation of the growth of virtual spaces. In the last year, among others, in addition to the aforementioned Nike, Hyundai and Gucci were also present in Roblox, and many technology companies invested in metaverse-related spaces, such as Facebook, which is now, therefore, Goal .
João Pereira Cabral, Legal Coordinator and Official Agent of Industrial Property in Invention