UKIPO releases guidance on the trade mark classification of NFTs

The UKIPO has published a Practice Amendment Notice (PAN) containing guidance on the classification of NFTs, virtual goods and services provided in the Metaverse in trade marks. 

The EUIPO published similar guidance last year (12th Edition of the Nice Classification) and interested parties in the UK have been waiting for the UK equivalent. The UK office has seen an increasing number of applications for trade mark specifications relating to NFTs and the metaverse and until now there has been no UK guidance on how to correctly frame these types of terms in applications and which classes they would fall in. This PAN aims to provide that clarity for how to approach these issues and the position that the UKIPO is likely to take. The new guidance applies immediately. 

The guidance confirms the following: 

NFTS 

• NFTs will not be accepted as a classification term alone as without an indication of the asset to which the NFT relates it is inherently vague. "Digital art authenticated by non-fungible tokens [NFTs]" would be acceptable. 
  
  
• The guidance recognises that NFTs can be used to authenticate anything (not just digital assets). As a result, physical goods clearly defined as being authenticated by NFTs will be accepted in the appropriate goods class. It gives an example of "artwork, authenticated by non-fungible tokens [NFTs] [Class 16]" being acceptable. 
  
  
• The same will apply to NFTs retailed or provided via online marketplaces. For example, "Retail services connected with the sale of [e.g. virtual clothing, digital art, audio files] authenticated by non-fungible tokens" would be accepted in class 35. 
  
  
• Other uses of NFTs will be considered on a case-by-case basis.

Virtual goods 

• Virtual goods will be treated in the same way as physical goods and applications for virtual goods will only be accepted if they are clearly defined. It gives the example of "downloadable virtual clothing, footwear or headgear" being acceptable in class 9. 

Virtual service/ Metaverse 

• If a service is capable of being delivered via virtual means, IPO will continue to accept such services, for example "education and training services delivered by virtual means [class 41]". 
  
  
• In addition, the UKIPO acknowledges that there is no reason why a service capable of being delivered by virtual means (such as video-conferencing), cannot be delivered inside the metaverse. As such, applications for services provided through the metaverse in the same class as more traditional forms of delivery will be acceptable (e.g. "education and training services provided via the metaverse [class 41]"). 
  
  
• It is recognised that this approach may not be possible for all services in the metaverse however, particularly where a particular service in the metaverse will not fall into the same class as the traditional form of delivery. The example given in the guidance here is the order of food and drink for consumption. This would be considered a class 43 service in the physical world, but an avatar 'consuming' food in the metaverse would not. Where provision via the metaverse is specifically mentioned, but where it is not immediately apparent that the service sought can be provided inside the metaverse, clarification will be sought by the examiner.
  
  
• Particular services which may be caught by this problem may be covered by a general services category - e.g. entertainment services, namely, provision of a virtual reality or metaverse based simulation gaming service. 

The new UK guidance is consistent with the EUIPO in relation to the requirement for clarity and the need to explicitly reference what is being authenticated by an NFT. It does however go further than the EU has by specifically recognising the potential for the crossover with physical goods. It will be interesting to see how this plays out in practice and whether the two offices take a slightly different approach in what they consider to be an acceptable application in relation to these types of goods/services. 

It is worth noting that the guidance makes it clear that this is a fast-moving technological field and that the guidance will need to be updated as and when new developments arise.