As a result of the rapid increase in Australian trade mark applications claiming virtual goods, goods and services in the metaverse, non-fungible tokens and goods and services related to blockchain, the Australian Trade Marks Office (ATMO) has recently released a guidance document on the classification of these technologies in Australian trade mark applications. This document can be accessed at: https://www.ipaustralia.gov.au/news-and-community/news/2023/08/10/22/52/new-guidance-on-trade-mark-classification-of-emerging-technologies.
Of note, the ATMO has also adopted various new additions to the Nice Classification, 12th Edition (2024 version), in advance of it coming into force on 1 January 2024.
The release of the Australian guidelines follows similar developments internationally, such as the European Union Intellectual Property Office’s 2023 draft Guidelines and the Korean IP Office’s 2022 examination guidelines for virtual goods.
The guidelines will likely also serve as a basis for the approach taken by the Intellectual Property Office of New Zealand (IPONZ), as IPONZ and the ATMO have historically worked together on a consistent approach on classification and IPONZ has recently confirmed that it will be refining its draft guidelines on virtual goods/services.
We summarise the key points of the Australian guidelines below.
The ATMO uses the term “virtual goods” to describe digital objects used in virtual online environments.
Virtual goods are correctly classified in class 9 because these goods essentially consist of data. However, the exact nature of the virtual goods must be specified.
For example: Class 9: downloadable virtual clothing.
Services relating to virtual goods will fall into the class that reflects the nature of the service itself.
For example: Class 35: online retail services for downloadable virtual clothing.
Metaverse and virtual environments
The ATMO will accept “metaverse” and “web3” in specifications to describe online virtual environments. However, due to its broad application, its preference is the term “virtual environments”.
For example: Class 41: education services provided in virtual environments
When considering the classification of services in a virtual environment, the ATMO will also take into account the impact of the service in the real world. For example, education services are classified in Class 41, whether provided virtually or in person because the real world impact is identical.
However, there are of course instances where the impact of the services in a virtual environment differs from that in the real world.
For example, an online restaurant in a virtual environment will not involve the service of actual food, rather it will provide virtual food. As a result, restaurant services provided in a virtual environment are a Class 41 entertainment service, not a Class 43 restaurant service.
An NFT (non-fungible token) is a unique token that exists on a blockchain, and acts as a digital certificate to record ownership of an item e.g. a collectible artwork. It is important to note that an NFT is not a good or service – but rather a means of certification.
Consequently, a claim for “NFT” or “non-fungible token” alone is not acceptable. Instead, applications must specify the exact nature of the goods being authenticated.
Class 9: downloadable digital image files authenticated by non-fungible tokens [NFTs]; or
Class 35: retail services relating to downloadable digital image files authenticated by non-fungible tokens [NFTs]
NFTs can also be used to authenticate physical assets and can demonstrate ownership of real world goods such as clothing. In such circumstances, these NFTs will be classified in the appropriate goods class.
For example: Class 25: clothing authenticated by non-fungible tokens [NFTs]
A blockchain is a distributed database that maintains a continuously growing list of ordered records, called blocks. A claim for “blockchain” alone is not acceptable.
For classification purposes, blockchain technology is a feature of goods or the method through which services are provided.
Class 9: downloadable computer software for blockchain technology
Class 36: electronic funds transfer provided via blockchain technology
The intricacies of classification in this space highlights the importance of seeking advice from specialists in Australian Trade Marks practice when preparing applications encompassing these types of emerging technologies.