11 January 2024

New Trademark Guidelines

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Classification of non-fungible tokens (NFTs), virtual goods and related services. Impact of the IPI's new Trade Mark Protection Guidelines on trade mark applications concerning virtual goods and services

  • Luca Hitz

    Senior Legal Associate

  • Marina Ritter

    Paralegal

Classification Practice of the Swiss Federal Institute of Intellectual Property

The Swiss Federal Institute of Intellectual Property (IPI) published its new guidelines in trademark matters on 1 January 2024. The new guidelines contain explanations on adapting the IPI's practice with regard to trademark applications in connection with virtual goods, non-fungible tokens (NFTs), and services in virtual environments. The classification practice is set out in Part 2, section 4.16 of the guidelines in trademark matters. At the same time, the new rule of the general remarks of the Nice Classification regarding services provided in a virtual environment has been included in Part 2, section 4.2. The changes in practice concern the classification of goods and services in connection with virtual environments, which was already the focus of the annual meeting of the Nice Union Committee of Experts last summer.

Virtual Goods

In the past, "virtual goods" have sometimes been rejected by the IPI on the grounds that, according to DUDEN, "virtual" meant "apparent" or "possibly existing" and that it was unclear what was meant by, for example, the purchase, sale, and exchange of a merely apparent service or a virtual good. In the new guidelines, the IPI has now clarified that virtual goods are not to be understood as physical goods that are used in virtual environments. These essentially consist of digital content and are therefore to be classified like all other downloadable digital goods in Class 9 and not in the class of the corresponding physical goods. Accordingly, designations such as "downloadable virtual clothing", "downloadable virtual toys" or "downloadable virtual building materials" are accepted in Class 9 (see IPI guidelines in trademark matters of 1 January 2024).

Non-Fungible Tokens (NFTs)

A non-fungible token (NFT) is a unique digital certificate that is registered in a blockchain and is used to record ownership of an asset, such as a digital work of art, or that acts as a certificate of authenticity for a physical good. In the new guidelines, the IPI has clarified that NFTs are not goods or services that are independent or classifiable within the meaning of the Nice Classification. Therefore, the designation NFT must be specified in each case.

If NFTs are to be classified in relation to goods, the goods that are to be authenticated by the NFTs must be named. The following goods are listed as examples of permissible wording:

  • downloadable digital image files authenticated by NFTs in Class 9
  • downloadable virtual shoes authenticated by NFTs Class 9
  • clothing authenticated by NFTs in Class 25.

In the case of services, a distinction must be made as to whether the service is authenticated by an NFT or whether the service has an NFT as such as its subject matter or theme. If the service is authenticated by an NFT, the corresponding service must be described precisely and the subject matter, i.e., the goods authenticated by the NFT, can be named. For example, an online marketplace for buyers and sellers of downloadable digital image files authenticated by NFTs can be provided in Class 35.

In the case of services that have NFTs as their subject matter or theme, the terms "non-fungible token" or "NFT" may be used without further specification. Examples of permissible wordings are:

  • Education in the field of NFTs in Class 41
  • Online provision of non-downloadable software for minting NFTs in Class 42

Conclusion

By adapting the guidelines, the IPI is responding to the challenges posed by the constant development of technology and intangible assets. Clarity with regard to classifications is essential to ensure effective trademark protection. International standardisation is also important to enable companies to protect their trademarks cost-effectively. Our Intellectual Property experts will be happy to assist you with any questions relating to trademark protection.
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