Trademark protection issues in the metaverse

Although the subject of the metaverse is not new, since Mark Zuckerberg’s announcement last October about his desire to build a metaverse that would allow people to connect and develop businesses, this “new world” has aroused the interest of many companies that see it as an additional means of visibility for their marketing and commercial operations.

The first cases concerning the unauthorized use of trademarks in this virtual alternative world have quickly emerged, notably last January between Hermès and the American artist Mason Rothschild who was inspired by the Birkin bags to create and sell digital objects in the metaverse.

If Hermès is one of the first companies to take action against the unauthorized use of its trademarks in the virtual world, it’s a safe bet that similar cases will follow as the metaverse continues to grow. This leads companies to question the protection of their brands in the virtual world: Does my trademark, registered in France for goods and services in the real world, protect me against unauthorized use in the metaverse?

Let’s review together the fundamental principles that govern trademark law in the real world and whose application to the metaverse may present difficulties.

→ Under the principle of specialty, a trademark is only protected for the goods and services covered at the time of filing.  Applied to the metaverse, the question is therefore whether “real” goods and services could be considered similar to their virtual counterparts.

Some consider that virtual goods are nothing more than computer data on a screen, thus requiring a filing specifically to protect the mark for use in the metaverse; as evidenced by the numerous applications for registration in the United States, notably in classes 9 (for software, or downloadable virtual goods – such as virtual shoes, for example), 28 (for video games), 35 (for services for the distribution or sale of virtual goods), or 41 (for entertainment services in the form of the supply of virtual goods – such as clothing, for example).

However, it would be easy to consider that clothes in the virtual world, intended to personalize an avatar, fulfill the same aesthetic function as clothes in the real world. Therefore, the designation of the class 25 to which the clothes belong would be sufficient.

To avoid any risk, and insofar as there is not yet any case law on the matter, it is therefore recommended that companies diversify their protection strategies by also covering classes of goods and services related to these virtual environments.

→ Under the principle of territoriality, a trademark is protected only in the territory in which it is registered. Since the metaverse is a universe in its own right, accessible by users worldwide, it may seem tricky to reconcile the territoriality principle with this “borderless” world.

A similar solution, to the one adopted in the case of trademark infringement on the Internet, could be applied, according to which the act of infringement of a French trademark is constituted as soon as a body of clues shows that the author of these acts sought to direct his activity towards the French territory/user.

However, this question is far from obvious insofar as, unlike a website, the metaverse does not, a priori, make any difference between the territories of the users.

The development of metavers therefore raises interesting issues for the future of trademark law.

This evolution of digital technologies pushes legal professionals to adapt in order to ensure an optimal legal security for the different actors of innovation. pays constant attention to these issues.

− Anaïs GREFFOZ, Intellectual Property Lawyer at Mark & Law