There has been much talk lately about web 3.0 and the metaverse, and the splitting into two realities, the “real” and the virtual, as if it were a new thing, when, in fact, physical and digital realities have been coexisting for a long time.
Since the advent of the internet and, above all, e- commerce, brands have diversified their channels and forms of exploitation, some of them in the physical realm and others in the digital one. Even back then, companies had to adapt to the new reality that was imposed. However, in general, and despite the fact that over time new legal texts have been enacted with increasingly updated provisions, the regulations that pre-existed before the arrival of the digital world continued to be applied to the new situations that arose. Where a clear evolution can be observed, where appropiate, is in the setting and interpretation of jurisprudential criteria.
We have already seen how major companies in the fashion, gaming and entertainment sectors (Balenciaga, Louis Vuitton, Nike, Fortnite, etc.) have been pioneers in creating their own experiences in the metaverse and incorporating legal practices that provide express coverage, in terms of Intellectual Property, to new uses in virtual environments, seeking, in equal parts, greater legal certainty, brand reputation and positioning.
The first actions that major brands have carried out to adapt to the new environment have been:
(i) Registering trademarks adapted to the new uses in the virtual environment. This is the case of Nike Innovate C.V. with the European Union trademark No. 18.605.923 “NIKELAND”, file (it is still in the process of being registered) in the following classes:
- Class 9: Downloadable virtual goods, namely, computer software for footwear, clothing, headgear, eyewear, handbags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in online virtual worlds; downloadable software for interactive games for use via a global computer network and via various wireless networks and electronic devices; downloadable software for participating in social networks and interacting with online communities; downloadable software for accessing and streaming multimedia entertainment content; downloadable software for providing access to an online virtual environment; downloadable software for creating, producing and modifying animated and non-animated digital designs and characters , avatars, digital overlays and skins for access and use in online environments, online virtual environments and extended reality virtual environments.
- Class 25: Footwear; clothing, namely, pullovers, trousers, shorts, t-shirts, shirts, sweatshirts, hoodies, sweatpants, vests, tank tops, track suits, jackets, anoraks, coats, underwear, belts, sports bras, socks, wristbands, headbands, hats, caps, visors, sweatbands, jumpers, skirts, dresses, scarves, gloves; sports clothing, namely, sports uniforms; sports leggings; sports sleeves; clothing for sports use; footwear and clothing incorporating near field communication (NFC) technology.
- Class 35: Online market services in relation to virtual reality gaming services.
- Class 41: Entertainment services, namely, the online provision of non-downloadable virtual footwear, clothing, headgear, eyewear, handbags, sports bags, backpacks, sports equipment, art, toys, accessories, animated and non-animated designs and characters, avatars, digital overlays and skins for use in virtual environments; virtual reality and interactive gaming services provided online from a global computer network and via various wireless networks and electronic devices; entertainment services, namely, the provision of online non-downloadable game software and online video games; entertainment services, namely providing virtual environments in which users can interact for recreational, leisure or entertainment purposes; entertainment services, namely, providing an online environment with streaming entertainment content and live streaming of entertainment events; entertainment services in the nature of organising, arranging and hosting virtual shows and social entertainment events.
- Class 42: Non-downloadable computer software for the creation, production and modification of animated and non-animated digital designs and characters, avatars, digital overlays and skins for access and use in online environments, online virtual environments and virtual environments of extended reality.
(ii) Monitor the registration of their trademarks in the appropriate classes for these new uses.
(iii) Review and, if necessary, update the contracts for the assignment or licensing of Intellectual Property rights to assign or retain, as determined in each case, the rights relating to certain types and channels of exploitation; analysing whether or not the previously signed contracts envisaged the possible digitisation or conversion to “NFT” of their products or services.
What is certain, despite the uncertain legal scenario full of questions that the metaverse raises, is that companies with concerns about having a presence in that parallel life called virtual reality, should be concerned about conducting an audit of their brands, analyse the risks that are foreseen and determine the plan of action implemented in each case, according to the particular situation of their portfolio of brands and designs.
At Ponti & Partners, we recommend carrying out a review of your designs, copyrights and trademarks portfolio, and updating the Nice classification, if necessary. You can contact us by email at email@example.com or by phone 934874936, we will be pleased to help you.
Article by Marta Vilá.