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    Home»Metaverse»Protection Of Metaverse-Related Trademarks In Taiwan
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    Metaverse

    Protection Of Metaverse-Related Trademarks In Taiwan

    adminBy adminJuly 11, 2022No Comments5 Mins Read
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    As major brands become more and more involved in the development and participation in the Metaverse, new challenges arise in the protection and enforcement of trademark rights in this untapped virtual world.

    As part of its Global Metaverse trademark portfolio, Nike’s applications Taiwan “Nike”,”Jordan, The “swoosh” logo, and the “Just Do It” slogan used in the Metaverse are currently under investigation by the Taiwan Intellectual Property Office (TIPO). According to a search of TIPO’s public database, these specified goods and services are Taiwan The application is:

  • Class 9: Equipped with downloadable virtual products, that is, shoes, clothing, hats, eyewear, bags, sports bags, backpacks, sporting goods, art, toys and accessories for use online and in the online virtual world. Computer program.
  • Class 35: A retail service featuring virtual merchandise, that is, shoes, clothing, hats, eyewear sports bags, backpacks, sporting goods, art, toys and accessories for online use. An online retail service that deals with virtual products such as footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sporting goods, art, toys and accessories.
  • Class 41: Entertainment services. That is, we offer online non-downloadable virtual shoes, clothing, hats, eyewear, bags, sports bags, backpacks, sporting goods, art, toys and accessories for use in virtual environments.
  • Some of these applications May 2022, TIPO requested amendments to the description of goods and services. TIPO’s amendment is still unknown, so Nike reaction. It is not yet known if and how the above “Virtual Product / Service” description will be accepted by TIPO.

    Not a party to WIPO, Taiwan We adopt the nice classification of goods and services to classify goods and services, and classify the nice classes into subclasses and various groups based on local practices. However, TIPO has not yet issued specific guidelines on how to submit trademarks used in “Virtual Products and Services” for protection. Also, this question has not been answered in the TIPO guidelines. For example, does “virtual clothing and shoes” need to be classified in Class 9? Are they related to Class 25 “Genuine Clothing and Shoes” merchandise? Perhaps these questions will be addressed on a case-by-case basis prior to the next update of the Trademark Examination Guidelines and subclasses.

    “Meta” or “Metaverse”-formative mark

    According to data released by TIPO, the number of applications containing the word “meta” or “metaverse” has increased since 2021. But can these marks be registered?

    Under Article 29.1 of the Taiwan Trademark Law, a mere description mark consisting only of a description of the quality, purpose of use, material, place of origin, or related characteristics of the specified goods or services cannot be registered because it has no unique characteristics. .. ..

    After searching TIPO’s online database, TIPO questioned the unique registerability of some “meta” or “metaverse” formation marks because they describe the specified virtual goods and services. I found out that. In local practice, approaches to increase the enrollability of such marks submit them in combination with other distinctive words / devices or prove the existence of secondary meaning through their use. That is.

    In addition, if you are trying to register a “meta” or “metaverse” formation mark for “real world” products that are essentially away from virtual products and services such as cosmetics and perfumes for facial care and beauty. Since the source of the product, not the product itself, is properly identified, there is a good chance that the “Metaverse” formation mark will be successfully registered.

    Infringement problem

    Not surprisingly, using virtual products (such as virtual apparel) with other people’s registered trademarks in the Metaverse (such as worn by avatars) can pose legal issues. If a trademark registered in connection with Class 25 “Genuine Clothing” is used in Metaverse’s “Virtual Clothing”, then the Virtual Clothing is a genuine clothing company, ie, the trademark owner.

    Whether and how Taiwan’s Intellectual property rights that were originally intended to apply in the real world are another difficult issue to be able to extend or convert to the virtual world because of the differences between real-world goods and virtual goods. Current practice is unclear whether the use of a trademark for a virtual product constitutes a use for a real-world product subject to trademark registration.

    To be cautious, Metaverse developers should perform a trademark availability search before releasing a virtual product in the Metaverse. This helps determine if a pre-registration / application exists and helps avoid the risk of using other brands. Virtual products / services.

    If the stylized brand meets the requirements of “creativity and creativity”, you are entitled to copyright protection in addition to trademark registration. Therefore, unless “fair use” protection is established, unauthorized reproduction of a trademark subject to copyright protection of the “virtual product” used in the Metaverse avatar may lead to copyright infringement. Taiwan..

    The above gives just a few examples of the legal issues already raised by the Metaverse, but as the Metaverse continues to evolve to challenge the unprecedented and established legal situation in this regard, it has jurisdiction. Other complex issues such as rights, contracts and privacy issues will definitely arise. It is not yet known if and how the legal system applicable to the registration and use of trademarks in the real world will be extended to the virtual world.

    The content of this article is intended to provide a general guide to the subject. Expert advice should be sought for certain situations.

    Amanda Yushan RiuSt. Island International Patent Law Office
    7th floor, No.248, Section 3
    East Nanjing Road,
    Taipei
    Taiwan
    Tel: 22775-1823
    Fax: 22731-6377
    Email: tony.chang@mail.saint-island.com.tw
    URL: www.saint-island.com.tw/EN/Home/index.aspx

    © Mondaq Ltd, 2022-Tel. +44 (0) 20 85448300- http://www.mondaq.com, sauce Business briefing

    Also As | NKE | US6541061031 big brand developing Engagement execution Have INC.Stock exchange Information Join Metaverse more and more New arrival news Nike Occurred of PRESS RELEASE problem protection right that's why their this trademark Undeveloped virtual When
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