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In our latest article on Trademarks in the Metaverse, we look at a recent decision from the EU IPO in Opposition No. B003199946 Vinicio v Initio.
This decision is interesting as it is one of the first decisions in which the EU IPO has had to consider the similarity of physical goods against virtual goods and services.
Vinicio filed an application to register the following logo:
The application covered a number of classes, including classes 3 and 35, covering soaps, perfumes and cosmetics (amongst others), as well as the retail thereof. The class 35 specification additionally covered retail services in relation to virtual goods including soaps, presumes and cosmetics (amongst others).
Opposition was filed against the application by Artessence FZC based on its earlier rights in the following logo, which is registered in relation to perfumery and cosmetics in class 3:
The Opposition Division noted in its decision that the class 3 goods covered by the earlier rights were the physical equivalent of the virtual goods the subject of the retail services within the application. However, this alone was not enough for a finding of similarity.
As per established EU IPO practice, the EU IPO is restricted in its assessment of similarity of goods and services to reliance on well-known facts, being facts which are likely to be known by anyone or which can be learned from generally accessible sources. For any matter that is not a well-known fact, the parties are required to provide evidence in support of their position.
The Opposition Division considered that the technologies associated with virtual goods are still sufficiently novel that it cannot be assumed that any particular market practices have been established. Consequently, there are no well-known facts upon which it could rely.
As the parties did not provide any evidence showing the commercial position in relation to the trading of virtual and real world goods, the Opposition Division found that the retail of virtual cosmetics and perfumery, etc, is dissimilar to physical perfumes and cosmetics. This assessment was made on the basis of the application of accepted principles of similarity of goods and services, which led to a conclusion that the nature, purpose and method of use of the relevant goods and services is not the same.
In our previous articles in this series, we commented on decisions issued in the Juventus and MetaBirkin cases, both of which found similarity between physical and virtual goods.
Subsequent to both of these decisions, the EU IPO issued its guidance on how to assess the similarity of physical and virtual goods, which essentially laid out that the EU IPO would not make any assumptions and that the burden is on the parties to produce evidence in support of their positions. This decision aligns with and reinforces the EU IPO approach.
Evidence is going to be an essential feature in cases involving the comparison of physical and virtual goods, at least for the foreseeable future. We still predict that we will see a time where it will be established practice that virtual goods are similar to their real world counterparts. However, this time will only come once there has been some considerable increase in the activity of brands within the MetaVerse.
Looking at the cosmetic industry specifically, it seems there are plenty of opportunities for brands in this field to boost engagement with their consumers using virtual goods and the Metaverse. Examples of how companies in this sector have already begun to interact with the Metaverse include P&G’s dedicated virtual sphere where customers can engage with its products virtually, Fenty Beauty filing trade mark applications covering virtual goods, virtual stores launched by LivingProof and Clinique and wearable NFTs offered by Estee Lauder.
For now, though, while real-life brands crossing over to the virtual world is not entirely new (something also noted in the EU IPO’s recent decision), the concept generally and within the cosmetic field is still an emerging trend and not an established market practice to the extent it can be considered well-known.
While that remains the case it seems the EU IPO is not willing to take a stance on virtual goods and will need to see evidence of the real-life position.
If you have any queries regarding this topic, or would like assistance creating or implementing an IP strategy, please contact Louise Foster and Sarah Neil of our team.
Category: Latest Insights | Author: Louise Foster, Sarah Neil | Published: | Read more
