Hold on to your pixels and prepare for a digital roller-coaster ride because we’re about to do a deep dive into the world of Non-Fungible Tokens (NFTs). NFTs have taken the investment and art world by storm, making memes into masterpieces and JPEGs as valuable as Picasso paintings. However, if you have an NFT, how do you ensure it is protected? Let’s dive in.
Let’s start with the basics: What is an NFT and can it be registered as a trade mark?
NFT stands for non-fungible token, which is a type of digital asset that uses blockchain technology to verify ownership and authenticity. NFTs can be used to represent a wide range of digital assets, such as artwork, music, videos and other types of digital content.
An NFT is unique and cannot be exchanged for another NFT. As such, the owner of an NFT may want to consider protecting their rights by way of a trade mark registration.
But what do I register my NFT for?
As at 1 January 2023, a new version of the International Classification of Goods and Services for the Purpose of Registration of Marks (Nice Classification) was introduced and implemented in Australia in which digital goods authenticated by NFTs listed separately for the first time.
It should be noted that there are some subtleties to the new regime in that only content linked to the NFT is included in the classification, not the NFT itself. Essentially the code sequence cannot be registered as it is neither a good nor a service.
A new item, “downloadable digital files authenticated by non-fungible tokens” included in class 9 has been included in the Nice Classification (amongst other terms) and an increasing number of applications are being filed for these types of goods.
IP Australia has not provided any guidance on how NFTs and virtual goods should be applied for however it has classified the below items which gives us some idea as to what the appropriate classes are:
• “Downloadable multimedia files containing artwork authenticated by non-fungible tokens [NFTs]” in class 9;
• “Downloadable digital files authenticated by non-fungible tokens [NFTs]” in class 9;
• “Retail services for virtual goods” in class 35; and
• “Graphic design of goods authenticated by non-fungible tokens [NFTs]” in class 42.
So, although a trade mark distinguishing goods such as clothing would traditionally be protected in class 25, it would appear that virtual clothing would be correctly classified in classes 9, 35 and/or 42.
So, should I file for the virtual version of my goods?
Brand owners should take the amendment to the Nice Classification to consider extending their trade mark protection to digital categories given digital assets will inevitably continue to grow in importance overtime. Of course, this means that businesses will have to apply for new trade marks for the new goods as existing registrations cannot be expanded.
If you consider your existing portfolio should be expanded to include virtual goods, or you would like further advise on this issue, contact one of our lawyers at brandU Legal today.