Applying EUIPO guidelines on the metaverse to Mexico
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Sponsored content

Applying EUIPO guidelines on the metaverse to Mexico

Sponsored by


Mariana Patiño of Olivares discusses the EU Intellectual Property Office (EUIPO) guidelines on the protection of intangible assets in the metaverse

As a result of interactions in the so-called metaverse and digital assets such as non-fungible tokens (NFTs), multiple business opportunities have arisen. In line with this, the debate about the general regulations of intangible assets has evolved.

Regarding the guidance notes published by EUIPO on June 23 2022 in relation to the classification of trademarks that distinguish virtual goods, it has been determined that according to their nature they correspond to international Class 9, insofar as they are treated as digital content. Furthermore, EUIPO has stated that the term ‘virtual goods’ should be specific according to the composition of the goods. For example, the content could be referred to as ‘virtual goods, namely virtual headgear and clothing’.

As concerns NFTs, the EUIPO has proposed to publish a 12th edition of its Nice Classification system, to be published in 2023, including ‘downloadable digital files authenticated by non-fungible tokens’. This would provide clarity and precision, because in EUIPO's opinion, NFTs only act as authentication certificates for digital files or elements.

In general practice, we have observed that rights holders, on the recommendation of their specialised attorneys, have applied for trademarks intended for use in the metaverse. These trademarks are in Class 9 for virtual goods, Class 35 for retail stores with virtual goods, and Class 41 for entertainment services, including the provision of virtual goods that are not downloadable online.

Considering that precision is a key objective to obtain adequate trademark protection, EUIPO has specified that services related to virtual goods and NFTs will be classified according to the classification principles established for services. This means services will be classified according to the branches of activities defined by the service class headings and their explanatory notes, or, if not specified, by analogy with other similar services in the alphabetical list.

The existing debate among the Intellectual Property Niche Academy I is whether NFTs should be considered unique digital certificates for the authentication of digital items, or whether it would be more useful to clarify that they are not limited to authenticating digital items only. If the latter, there is a possibility that NFTs could transfer to the physical or material realm in that they could be downloaded, and with the support of 3D printing models.

It is worth mentioning the way in which the Mexican Institute of Industrial Property (IMPI) interprets these new regulations in the classification of trademarks to distinguish goods or services in the metaverse. Up to this point, we have observed that examiners have adopted the criterion of accepting NFTs in Class 9 without further elaboration. However, specific clarification has been requested with respect to the generality of virtual goods or products as set forth by EUIPO.

It will be interesting to see if an interpretation is made with respect to the use of trademarks in the metaverse and their possible transformation by download to the everyday, physical world.

more from across site and ros bottom lb

More from across our site

Sources debate the implications of an opinion by Delaware’s chief judge Colm Connolly that lambasted the NPE IP Edge
Five partners reveal how delays in examining trademark applications are affecting their advice to clients and how they pitch new work
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Partners at Quinn Emanuel explain how walkie-talkie and real-estate analogies helped them win over a jury at the Eastern District of Texas
The heads of Malaysian firm HHQ’s new technology practice group say they can be frontline advisers on the intersection between AI, blockchain, and IP
Darren Jiron, Finnegan’s managing partner in London, discusses the firm’s growth plans and misconceptions about US firm culture
The EMEA region research cycle has commenced - do not miss this opportunity to nominate your work from 2023!
A former partner at Stroock & Stroock & Lavan, which voted to dissolve in October, has joined McCarter & English
As ChatGPT celebrates its first birthday, we are still grappling with a multitude of IP concerns
Sources say an official role at an IP industry body is great for generating business leads, but that shouldn’t be the only motivation behind taking on the responsibility