Navigating trade mark classification for emerging technologies - IP Australia issues guidance

In Brief - We explore IP Australia's guidance and consider whether 'emerging technologies', including non-fungible tokens, blockchain, virtual goods and the metaverse, can be trade marked.

These emerging technologies had not previously been addressed by IP Australia's Trade Marks Manual of Practice and Procedure. 

What is a non-fungible token (NFT)?

An NFT is a unique digital token that exists on a blockchain and operates as a record of ownership. NFTs have been promoted as acting as a form of certificate of authenticity. Similarly, an artist could make or 'mint' an NFT as a digital record of ownership of a digital artwork. NFTs can also be used as records of ownership for physical assets. They are not the assets themselves; ownership of an NFT does not, of itself, grant any rights in respect of the underlying asset.

Can an NFT itself be trade marked? 

In short, it depends.

The word mark for 'NFT' or 'non-fungible token' cannot be, because (as IP Australia's guidance explains) it lacks specificity since an NFT is a means of authentication rather than being referrable on its own to a good or service as a badge of origin.

However, this does not mean that word marks and image marks forming brands and badges of origin distinguishing the NFT cannot be protected provided the NFT can be made specific to a protectable class of goods or services.

IP Australia's guidance suggests that rather than making a trade mark application for the 'NFT' or 'non-fungible token', the application should describe the goods which are authenticated by the NFT. The appropriate class will be the class that would relate to those goods even if they were not authenticated by an NFT. 

IP Australia provides the following examples:

• Class 9: downloadable digital image files authenticated by non-fungible tokens [NFTs]
• Class 9: downloadable digital music files authenticated by non-fungible tokens [NFTs]
• Class 25: clothing authenticated by non-fungible tokens [NFTs]

Classes of goods are set out at Part 1 of Schedule 1 to the Trade Marks Regulations 1995 (Cth). For example, the heading of class 25 is "[c]lothing, footwear, headgear". 

Services relating to NFTs can also be trade marked. Again, however, the appropriate class should be selected on the basis of the service itself, rather than its relationship to NFTs. For example, IP Australia suggests that an application for "providing online non-downloadable computer software for minting non-fungible tokens [NFTs]" should be made in relation to Class 42. 

Classes of services are set out at Part 2 of Schedule 1 to the Trade Marks Regulations 1995 (Cth). For example, the heading of class 42 includes "design relating thereto; . . . design and development of computer hardware and software".

Virtual goods, blockchain and the metaverse

Applications that describe a class of good or service merely as 'virtual goods' or 'blockchain' will be considered too vague and will not be accepted by IP Australia. IP Australia has clarified that trade mark applications for virtual goods should explicitly state the nature of the virtual goods (for example, clothing or music), and should be made in relation to Class 9. The heading of Class 9 includes 'data processing software' and 'computer software'. Similar to the approach for NFTs, the appropriate class for a trade mark application for services relating to blockchain and virtual goods will depend on the nature of the service itself.

IP Australia's approach to services in the metaverse is slightly more complex. In the first instance, IP Australia has said that while the terms 'metaverse' and 'web3' will be accepted in applications, 'virtual environments' is the preferred term. In determining the appropriate class of services, applicants should select the class that describes the real world impact. For example, virtual construction services in the metaverse do not result in physical construction in the real world. These services would be classed as an entertainment service under Class 41, rather than a building construction service under Class 37. 

However, there may be instances where the virtual and real-world effects of a service in a virtual environment are the same. For example, education or telecommunication services may have the same impact in a virtual environment as in the real world. 

Conclusion

It is not unusual for new technologies to become mainstream (or even occasionally obsolete) before official guidance or legal regulations are updated to incorporate them. 

Trade marks for goods and services associated with these technologies have still been capable of being approved before IP Australia's update to their Trade Marks Manual of Practice and Procedure in August 2023. Seeking the advice of legal practitioners with trade mark and intellectual property expertise may prove the key to a smooth trade mark application process for new technologies where official guidance may be some years away.