NFT: trademark registrations in the metaverse

Ever since Mark Zuckerberg announced his plans to turn his social media platforms into a metaverse business, NFTs and metaverse have been in the spotlight. The metaverse is the new internet, in which all 3D spaces are linked together. Participants in the metaverse use an avatar, a virtual character, with which someone communicates, meets, flirts, et cetera with others. NFTs (non-fungible tokens) are unique, non-exchangeable digital items. NFTs were initially introduced for digital forms of art.

 

Much like in the physical world, someone will want to present themselves in a certain way. Also companies are now starting to fully anticipate this. Products and services are offered/sold as NFT. In order to maintain ones unique market position in the new online world, trademark registrations are now also being sought for NFTs by companies the likes of Yves Saint Laurent, Heineken and Nike.

Fraud with NFTs is commonplace according to OpenSea (a large marketplace for NFT items). Nike has recently sued online platform StockX, because a virtual sneaker from Nike was offered virtually as NFT there. Consumers might conclude this is with consent from Nike, but this isn't the case. (Nike had announced to launch sneakers as NFT with another party, RTFKT).

Although an NFT is just a representation of the actual product, legally it is not the same (just like a miniature car and a real car aren’t the same). For that reason, more and more companies are protecting their brands not only for the actual products, but also for NFTs.

trademark-registration

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?