Trademarks and Metaverse: the EUIPO’s View on Protection in Web 3.0

Prepared by Paola Furiosi and Giuseppe Massimo Verrecchia

The EUIPO (“European Union Intellectual Property Office”) has recently published some indications that shed light on the approach the European office intends to take when it comes to registration of trademarks that identify digital assets (and their certificates – non fungible tokens ”NFT”) in the metaverse.

The need for this stance by the EUIPO derives from the booming in applications that the office has received in recent months for the registration of trademarks for the protection of products and services offered on Web 3.0 and which contain terms relating to virtual goods and non-fungible tokens.

To date, the trend by major brands in terms of extension or new registrations for the protection of their signs in the metaverse is to claim classes compatible with the metaverse (i.e. virtual goods and services offered via a digital reality), namely: 9 (computer software), 35 (advertising), 36 (financial, monetary, banking services), 41 (entertainment; sports and cultural activities) and 42 (design and development of computer and computer programs).

The recent practical tips by the EUIPO also follow this path. In particular, the European office focuses on class 9, arguing that:

  1. “Virtual goods are proper to Class 9 because they are treated as digital content or images. However, the term virtual goods on its own lacks clarity and precision so must be further specified by stating the content to which the virtual goods relate (e.g. downloadable virtual goods, namely, virtual clothing)”; and
  2. “The term non fungible tokens on its own is not acceptable. The type of digital item authenticated by the NFT must be specified” . With this in mind, Class 9 of the 12th edition of the Nice Classification will include the term “downloadable digital files authenticated by non-fungible tokens”.

Pending the entry into force of the 12th edition of the Nice Classification (scheduled for January 1st, 2023), the EUIPO, with this practical note, has provided a very useful input that will, already now, allow interested parties to better draft their trademark applications, by immediately identifying, in the most correct way possible, the subcategory of products that fall within Class 9, thus reducing the risk of any observations and requests for amendments by the European office in the examination proceedings.

The new EUIPO Guidelines for 2023 (currently at the draft stage and under review by stakeholders, who will be able to submit their comments until October 3rd, 2022) will outline the new approach established by the European office.

Finally, registering (or extending protection) of one’s trademark in the Web 3.0 is a fundamental first step to protect a brand in the metaverse, but the active monitoring of the use of one’s trademarks by third parties in the digital world cannot be disregarded. Infringement in the metaverse is a growing phenomenon and also affects brands which are not yet present in the metaverse. For this purpose, monitoring of the metaverse and notice-and-take down activities will be necessary.

Let’s Talk

For a deeper discussion, please contact:

Andrea Lensi Orlandi

PwC TLS Avvocati e Commercialisti


Paola Furiosi

PwC TLS Avvocati e Commercialisti