UK Intellectual Property Office issues new guidance on trademarks for NFTs and the metaverse
Fivefold increase in applications for virtual reality-related terms at the UK Intellectual Property Office | Guidance follows release of government white paper on AI.
The UK Intellectual Property Office (IPO) has published updated trademark guidance on NFTs, virtual goods and the metaverse.
Trademark applicants are increasingly seeking to use virtual reality-related terms, with 2.4% of all UK IPO applications in 2022 including such a phrase.
According to analysis of 4.1 million trademark applications by the IPO, applications using terms such as “virtual environments” and “Web3” increased fivefold from 2014 to 2017, with the higher volume maintained in the years since then.
The new guidance provides clarity on how to classify non-fungible tokens (NFTs), virtual goods, and services offered in the metaverse. It has been published following consultation with IPO’s stakeholders and user organisations.
According to the guidance, NFTs will not be accepted as a classification term alone, as “without an indication of the asset to which the NFT relates, the term is inherently vague”. However the IPO will accept certain terminology in class 9, including digital art, downloadable graphics and downloadable software that is “authenticated by NFTs”.
In terms of virtual services, the IPO states it will accept services capable of being delivered by virtual means, such as education and training, and interactive virtual auctions. Regarding the metaverse, some services may be accepted in the same class as their more traditional forms of delivery, such as education and training.
However, a metaverse avatar “consuming” food and drink would not constitute a class 43 service, the IPO said, and some services may fall into a more general category of “entertainment services, namely, provision of a virtual reality or metaverse based simulation gaming service”.
Commenting on the guidance, the IPO’s deputy director of strategy development and delivery Guy Robinson said: “As the development and trajectory of metaverse technology is blurring the lines between the physical and virtual worlds, we are continuing to work closely with our colleagues in the newly formed Department of Science, Innovation and Technology and other relevant bodies to align our understanding of the metaverse, Web3 or ‘immersive virtual worlds’, while continuing to making sure that our IP framework is fit for today and the future.
“Of course, there remain many big, long-term questions yet to answer—but it is essential we think about them now.”
AI white paper
The new guidance comes after last week (March 29) the government launched a white paper on AI in the UK, to “drive responsible innovation and maintain public trust” in the technology.
It sets out the government’s approach to regulating AI while aiming to make it easier for businesses to tap into the opportunities and benefits.
The paper outlines five principles that regulators should consider in the industries they monitor, which are: safety, security and robustness; transparency and explainability; fairness; accountability and governance; and contestability and redress.
Samantha-Jayne Millington and Rebecca Pakenham-Walsh of Fieldfisher commented in a blog on the white paper that this move to empower existing regulators, rather than introducing a new regulator or associated legislation, was interesting.
“The government’s approach is therefore an adaptable and context-based one, which they say avoids heavy-handed legislation that could stifle innovation as this fast-moving technology develops,” they wrote.
However, there was some criticism that the government’s approach was ‘light touch’ when compared with measures being taken by the EU, they noted, with the European Commission proposing an Artificial Intelligence Act with a focus on a risk-based framework.
“Such a contrasting approach has led many to consider that the UK’s lack of detailed and unified regulation could cause issues,” said Millington and Pakenham-Walsh.
Ciara Cullen, partner and IP and technology litigation specialist at RPC, also commented on the lack of legislation.
“The current legislative framework for intellectual property is still very much playing catch-up with new technologies such as artificial intelligence (AI),” she said.
“Given the absence of a clear and robust legislative framework, there is considerable uncertainty for both IP rightsholders and AI developers and the scope for IP infringement is rife—balancing the competing interests of artists and creators (who want to be remunerated for use of protected works and derivative works) and AI developers (who some may say represent the future of the creative industries) is no mean feat.”
