Trade mark classification guidance from IP Australia

There has been a surge in trade mark applications in the digital space, notably concerning virtual goods, virtual environments such as the metaverse, NFTs, and the blockchain according to observations made by IP Australia.  This article discusses the things to consider when selecting the classification(s) for virtual goods and services when filing an application for registration of a trade mark.

IP Australia Guidelines for virtual goods

IP Australia has developed a guide titled “Trade mark classification guidance: Virtual goods, metaverse, NFTs, and blockchain” (Guidelines) regarding trade mark classifications for goods and services in the technology sector in response to the emerging requirements for protection over these virtual assets.  The Guidelines are beneficial for businesses with a presence in the Australian jurisdiction, that have or are considering expanding in digital spaces and need guidance.  The Guidelines contain four (4) distinct sections:

• virtual goods;
• metaverse and virtual environments;
• non-fungible tokens (NFTs); and
• blockchain.

What is the correct classification of a virtual good?

Virtual goods are digital, intangible objects that can be used within online virtual environments.  Virtual goods are defined in Class 9 of the Nice Classification as virtual goods consists of data.  The following terms ‘virtual good’ or ‘downloadable goods’ alone in a trade mark application will not be accepted because it lacks specificity.

Trade mark applications must be specific by clearly defining the exact nature of the virtual good with precision.  Examples of clear and acceptable clarifications of a virtual good includes the specification of the software, music, clothing, or image file.

The IP Australia guidance document listed the following example of acceptable clarification of a virtual good for reference:

“Class 9: downloadable virtual clothing“

Services relating to virtual goods will fall out of Class 9 and into other classes depending on the nature of the service, for example:

“Class 35: online retail services for downloadable virtual clothing“

What is the correct classification of a metaverse and virtual environment?

There are various ways to describe online environments where users have virtual interactions such as “metaverse,” “virtual environment,” and “web3”.  IP Australia has a preference for the term “virtual environment” due to its broad application to a diverse context, for example:

“Class 41: entertainment services provided in virtual environments

Class 42: hosting virtual environments ”

Assessing the categorisation of services in virtual environments is a meticulous process.  IP Australia adopts an approach that evaluates the real-world impact of online services in a virtual environment.  Often when the purpose and real-world consequences of a service are indistinguishable — whether delivered virtually or in person — the virtual service aligns with its real-world counterpart.  For example, educational and banking services maintain their Class 41 and Class 36 classifications, respectively, due to their consistent real-world impact.  The method of delivery does not alter the end benefits.

Nevertheless, scenarios arise where the virtual realm’s impact diverges from reality.  For instance, a virtual restaurant in a virtual environment does not involve physical food consumption, as online avatars partake in virtual meals.  Consequently, online restaurant services are categorized under Class 41, distinct from Class 43 restaurant service.  Similarly, virtual travel simulations do not entail physical transportation, warranting classification under Class 41 entertainment service rather than Class 39 transportation service.

What is the correct classification of a non-fungible token?

A non-fungible token (NFT) is a distinct token within a blockchain, serving as a digital certificate to establish and validate ownership of items such as digital artworks or collectibles.  NFTs are not commodities or services but rather a method of certification.

A generic claim for “NFT” or non-fungible token” is insufficient in an application.  Applications must precisely describe the type of goods as specificity about its exact nature is required, for example:

“Class 9: downloadable digital image files authenticated by non-fungible tokens [NFTs]

Class 9: downloadable digital music files authenticated by non-fungible tokens [NFTs] ”

Similarly, services linked to NFTs must be clearly defined:

“Class 35: retail services relating to downloadable digital image files authenticated by non-fungible tokens [NFTs]

Class 42: providing online non-downloadable computer software for minting non-fungible tokens [NFTs] ”

NFTs can verify physical items by associating digital tokens with real-world assets, confirming ownership.  This falls under the relevant goods class in such cases:

“Class 25: clothing authenticated by non-fungible tokens [NFTs] ”

What is the correct classification of a blockchain?

A blockchain serves as a secure, distributed ledger for recording encrypted data blocks.  Its application span in a multitude of fields, typically within cryptocurrency, finance, gaming, and digital authentication.

A vague claim of “blockchain” is inadequate as it is not specific and will be rejected in a trade mark application.  Blockchain technology serves as an attribute of goods or as the means for service provision for classification.  IP Australia provides the following examples of acceptable blockchain descriptions which specifies the exact nature of the blockchain:

“Class 9: downloadable computer software for blockchain technology

Class 36: electronic funds transfer provided via blockchain technology

Class 42: computer programming of smart contracts on a blockchain ”

Further information about trademark classifications for emerging technologies

If you need advice on trademark classifications for emerging technologies, contact us for a confidential and obligation-free discussion:

Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

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