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Trademarking in the Metaverse: From coined phrase to a descriptive word, a 30-year decline of distinctiveness
Home / News & Events / Trademarking in the Metaverse: From coined phrase to a descriptive word, a 30-year decline of distinctiveness
The word “Metaverse” has been around for some time. It was coined by Neal Stephenson in the 1992 novel “Snow Crash”, but its wider adoption has been more recent. In 2022, 30 years since the term was first published, “Metaverse” came second-place in the Oxford English Dictionary word of the year. It is fair to say that “Metaverse” is one of the most popular buzz words of today.
The question is, has the word become so popular that it cannot be used as a trade mark?
The EU IPO addressed this question in two recent applications to register “Metaverse” marks, which we highlight below.
Metaverse Food and Metaverse Drink
In February 2022, Oshee Polska Sp. Zo.o. (the “Applicant”), filed trade mark applications for METAVERSE FOOD and METAVERSE DRINK .
The applications were refused by the EU IPO on the basis that the marks are non-distinctive as consumers would understand the marks to indicate that the goods are food and drink products which are available in a virtual space.
Real or Virtual World
The Applicant filed an appeal arguing that the goods applied for are physical goods for consumption in the real world and not goods which exist in the virtual world. Therefore, the marks should be assessed in relation to an entirely different category of goods to those used by the EU IPO in its assessment – food supplements and beverages which provide nutritional value. The EU IPO was said to have incorrectly referred to images of virtual goods in its decisions.
The Applicant further claimed that “Metaverse” is defined strictly as a virtual world and should not be confused with other online activity. In particular, an online shop selling goods which are delivered in the real world is not to be considered part of the Metaverse.
In addition, it was argued that a consumerfaced with the marks in supermarkets or pharmacies, would not understand the marks as an indication of the characteristics of the goods, but rather as a fantasy juxtaposition, which would be easily remembered by the unobvious use of the words. This would enable consumers to distinguish the goods from the goods of other entities.
Finally, the Applicant highlighted that the EU IPO has accepted other marks, including METAVERSE ENERGY and to refuse the applications would represent inconsistent practice.
The Board of Appeal dismissed the appeals, agreeing with the first instance decision that the marks are devoid of any distinctive character.
The Board of Appeal held that the mark would be understood by the relevant consumer as “e”. Contrary to the assertions of the Applicant, the Board of Appeal held that “Metaverse” is not a well-defined and distinct category in the virtual world and the borderline between the virtual world and the real world is not clear.
The Board identified examples which indicate that the Metaverse is another form of online commerce which is used by companies to promote goods and brands. This activity subsequently turns into increased sales of goods in the real world. The Board of Appeal also referred to commentary suggesting that in the near future, online shops will turn into Metaverse shops where goods will be presented in virtual form, but the purchase will concern physical products which will be delivered in the real world. In light of these examples, the Board saw no error in the expert’s broad definition of the Metaverse as a “virtual space”.
The Board concluded that the relevant public would perceive the mark as merely indicating that the food goods, beverages and food supplements intended for sale under the mark, are offered or can be purchased from a virtual space.
Turning to other registrations accepted by the EU IPO, the Board had no difficulty in accepting that the decision may be inconsistent with previous decisions, but that is not a justification for acceptance of the marks.
The decision represents what we expect to become the uniform practice going forwards, namely, that “Metaverse” is devoid of distinctive character. It will be interesting to see if the existing registrations for METAVERSE ENERGY will be invalidated in the event they are enforced.
In our opinion, the decision has to be correct. In our earlier article we suggested that when comparing goods and services, physical goods will be deemed identical, or at least similar, to virtual representations of those goods in the Metaverse.
If our position is correct, the EU IPO is right to adopt the reasoning that use of the word METAVERSE in relation to physical goods will merely indicate to consumers that those goods are available for sale in the Metaverse. The lines between the real world and the physical world will only blur further as technology advances and the position adopted by the Board takes a refreshingly practical approach to the commercial reality of the use of the word “Metaverse” and its anticipated development in the near future. This practical approach allowed the Board to attempt to future proof EU IPO practice when assessing the distinctive character of the word METAVERSE.
Whether a large corporation or entrepreneur, protecting your brand is crucial. If you are concerned by any of the issues highlighted by this case, you can contact us using the online enquiry form, email firstname.lastname@example.org or call +44(0) 20 7405 4044 to arrange a free and confidential consultation.
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