Registration Of Trademarks Operating In The Metaverse

• Published date: 09 August 2022
• Subject Matter: Intellectual Property, Technology, Trademark, Fin Tech
• Law Firm: Kochhar & Co.
• Author: Ms Lynn Lazaro and Aparna Venkat

Metaverse, is the virtual-reality space in which users interact via computer-generated environment, something similar to what already exists on gaming platforms. It is a simulated digital environment that encompasses a network of 3D virtual worlds focused on social connection. Non-fungible tokens and their underlying technology have surged the market value of digital assets. From gaming to art and e-commerce, every industry has started to enter the metaverse sphere to explore the endless opportunities it has to offer.

There prevails a dual mindset of companies, where few are eager and contemplating offering goods and services to the public in the metaverse and few that rather wait it out and fully understand the implications that is to come by trading in the digital virtual market. While this battle is ongoing on one side, leading brands such as AJIO, WALMART, VOGUE, etc. have entered the virtual market and furthermore applied for trademark protection in India under Classes 9, 35 and 42. The classification of goods and services under the NICE Classification ranges from classes 1 to 34 for goods and 35 to 45 for services. Although, the underlying nature of goods/ services becomes secondary in this context and channel of distribution takes precedence. Thus, applications are being filed with relevant descriptions under class 9 - 'downloadable virtual goods, namely computer programs', class 35 - retail store services featuring virtual goods and class 42 - on-line non downloadable virtual goods and NFTs, respectively. Additionally, companies apply under class 36 for financial services, including digital tokens, for facilitating trade in the virtual marketplace. Based on the noticeable pattern, it is safe to assume that a separate bracketed category of 'virtual goods' and 'digital collectibles' has emerged.

The term 'digital product' has been used in commercial law but the term itself is not defined, leaving it open to interpretation.

• Policy regarding Foreign Direct Investment use the said term in the definition of 'E-commerce', which reads 'E-commerce means buying and selling of goods and services including digital products over digital & electronic network'. The rules further capture the definition of 'Marketplace based model of e-commerce' - that recognizes the platform that facilitates digital sale of goods and services.
• Consumer Protection (E-Commerce) Rules, 2020 provides rules regulating all goods and services bought or sold over digital or electronic...