Burberry metaverse TM application faces partial rejection
EUIPO says fashion brand’s check pattern isn’t eligible for non-fungible tokens | Burberry’s design was devoid of any distinctive character under the European Union Trade Mark Regulation.
The European Union Intellectual Property Office (EUIPO) has partially rejected a trademark applied for by luxury fashion company Burberry to cover the metaverse.
In a decision handed down Wednesday, 8 February, the EUIPO concluded that Burberry’s trademark—which consisted of its well-known Burberry check pattern design—was not eligible for registration for certain goods and services.
Burberry had applied to register its trademark in February last year for use in the metaverse. The goods and services listed include non-fungible tokens and digital tokens, and downloadable virtual goods in class 9; online retail services related to fashion, clothing and related accessories in class 35; and non-downloadable digital collectibles in class 41.
Back in August last year, the EUIPO raised an objection against the trademark, after it found that the mark was not eligible for registration.
At the time, the EUIPO held that Burberry’s design was devoid of any distinctive character under article 7(1)(b) of the European Union Trade Mark Regulation.
For a trademark to possess distinctive character, it must “serve to identify the product in respect of which registration has been applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings”, said the office.
Turning to the goods in question, which include downloadable and virtual versions of real life clothing, footwear and decoration related goods, the EUIPO held that a combination of elements forming a check pattern is “obvious and typical for the goods and not essentially different from other check patterns commonly found in the trade”.
The office set out a list of internet searches it had conducted to support its finding that the mark is not markedly different from various basic patterns commonly used in the trade. The search list included links to retailers Mango and Boohoo.
It added: “The office notes that the consumer’s perceptions for real-world goods can be applied to equivalent virtual goods as a key aspect of virtual goods is to emulate core concepts of real-world goods.”
In response to the original objection, Burberry failed to submit observations within the time limit.
“Having received no observations from the applicant, the office has decided to maintain the objection set out in the notice of absolute grounds for refusal,” said the EUIPO in last week’s decision.
However, Burberry did secure trademark registration for several goods in classes 9 and 41, including downloadable interactive characters, avatars and skins, and providing online video games.
Burberry can file a notice of appeal within two months of the decision.
Today’s top stories
