Trademark Troubles in the Metaverse: Burberry's Application Rejected by EUIPO

The development of new technologies has a strong impact on the protection granted by Intellectual Property Rights. As new products and services emerge in the digital realm, it becomes increasingly important to understand how IP laws apply to them. One such example is the sale of products in the metaverse, and whether such sales infringe on trademarks.


It is too early to have a complete theory on this matter, but each day new expert opinions and even decisions are slowly clarifying the current scenario. One recent decision comes from the European Union Intellectual Property Office (EUIPO), which refused a trademark application filed by Burberry Limited (EU trademark application number 018647205) to protect, among other goods and services, "NFTs" (Class 9 of the Nice Classification).



The relevant application is a figurative mark comprising the well-known Burberry pattern. The EUIPO considered that the "NFT" included in the applicant's list of goods cover downloadable and virtual versions of clothes or footwear. As the figurative mark is a pattern intended to be placed on the good, the assessment should be based on the same principles applicable to "ordinary" three-dimensional marks. In particular, the Office states that "consumer's perceptions for real-world goods can be applied to equivalent virtual goods as a key aspect of virtual goods is to emulate core concepts of real-world goods."


In addition, the EUIPO stated that the pattern is not different from other patterns used by other companies. As a consequence, the sign is devoid of any distinctive character for, among others, NFT goods and, therefore, the application should be rejected for these goods.


This decision highlights the importance of distinctive character when it comes to trademarks, even in the digital realm. While the legal analysis may be the same as for "real world" goods, it is important to consider the unique characteristics of digital products and services when it comes to IP protection.


As the use of NFTs and other digital assets continues to grow, it will be interesting to see how IP laws adapt to this new landscape. The Burberry decision serves as a reminder that, even in the metaverse, trademarks must meet the same standards of distinctiveness as in the physical world.

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