Trademark protection strategies: Web 3.0 and trademark protection – Commentary

Introduction
AI
Blockchain, virtual currency and NFTs
Metaverse
Comment

Introduction

The innovations of Web 3.0, including blockchain, big data, virtual reality and artificial intelligence (AI), have connected the real world with the virtual, presenting all kinds of business opportunities. Blockchain technology, for one, has enabled the rise of virtual currencies and non-fungible tokens (NFTs) as well as their transactions. Elsewhere, ChatGPT (an AI chatbot developed by OpenAI) has ushered in an AI trend that has sent shockwaves across industries.

This trajectory towards going virtual likely means that trademark protection afforded to brands will also apply to the virtual world. Through the lens of some of these Web 3.0 features, this article provides an overview of goods and services specifications that should be considered for the purposes of trademark protection for devising an all-round trademark strategy for the virtual world.

AI

AI is the technology of using computer programs to simulate human intelligence. The essence of this technology is its software-based algorithm. “AI” could also refer to a system that operates similarly to human:

• thinking;
• cognitive architecture; and
• neural networks.

One of the more established uses of AI is to employ it in robotic applications. Trademark protection may apply to:

• “industrial robots”;
• “surgical robots, nanorobots and nanites for medical purposes”; and
• “robots for entertainment; teaching robots”.

For organisations or companies providing AI development services, it will be necessary to include in trademark filings services such as:

• AI consultancy;
• research in the field of AI technology;
• research, design and development of computer programs; and
• software.

Blockchain, virtual currency and NFTs

Blockchain is a peer-to-peer network that utilises cryptography and consensus mechanisms to create and store large amounts of transaction records on chains of blocks. Currently, the largest application of blockchain technology is virtual currency, such as bitcoin.

NFTs are also a type of digital cryptocurrency. Each token represents a unique piece of digital data, such as an image, an audio file, a video, a game project, a post on social media, or a creative work in any digital format. NFTs are certificates confirming the ownership of such digital files.

The 12th Edition of the Nice Classification of Goods and Services specifies the goods and services relating to blockchain technology, virtual currency and NFTs. Relevant goods may include:

• “downloadable digital files authenticated by non-fungible tokens”;
• “downloadable computer software for managing crypto asset transactions using blockchain technology”; and
• “downloadable cryptographic keys for receiving and spending crypto assets”.

Relevant services may include:

• “electronic transfer of crypto assets”;
• “financial exchange of crypto assets”;
• “electronic funds transfer provided via blockchain technology”;
• “user authentication services using blockchain technology”; and
• “mining of crypto assets / cryptomining”.

Metaverse

The metaverse is a network of 3D virtual worlds that are focused on social connections. This man-made virtual environment is accessible through virtual reality glasses, augmented reality glasses, mobile phones, personal computers and electronic game machines.

Some of the most promising business opportunities come from the various virtual goods and services existing in this environment. Fundamentally, these are “downloadable software programs” and “virtual image files or software, not downloadable”. Specifically, they may be:

• “downloadable virtual product computer software”;
• “providing online image files of virtual goods, not downloadable”; or
• “providing online virtual product computer software, not downloadable”.

For trademark filings pertaining to marketing and entertainment, “retail services for virtual goods” and “providing online game entertainment services using various virtual images” are indispensable.

In addition, the 12th edition of Nice Classification has added the following specifications of goods and services in connection with the virtual world of metaverse:

• “devices for the projection of virtual keyboards”;
• “providing online virtual guided tours”; and
• “providing virtual computer systems via cloud computing.”

Comment

The specifications of goods and services designated for use by trademarks will continue to be redefined to reflect the latest advancements of these new technologies, especially as developers continue their research and development on various new technologies in Web 3.0.

Trademark filing practices in the majority of countries do not require the use of certain fixed terms for the specifications of goods and services designated for trademarks – applicants are free to come up with their own definitions and descriptions for the said specifications. However, it may be beneficial for applicants to consult with professional trademark agents on specifications of goods and services before filing for registration. This is to prevent ambiguous definitions and wrong classifications in such specifications delaying the examination process (eg, by causing the trademark registration to be ineffective in protecting the specifications that truly matter). It would also help clarify the scope of protection afforded by the trademark and offer valuable time needed to devise trademark strategies for getting ahead in the new era of the web.

For further information on this topic please contact Audrey Liao or Clair Y W Gao at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300) or email ([email protected] or [email protected]). The Lee and Li website can be accessed at www.leeandli.com.