New opportunities for growing your brand

Numerous companies are currently getting into NFT technology to generate brand awareness, retain customers, and create new revenue streams. Budweiser, for example, launched a collection of NFTs with customized beer cans on the NFT commerce platform Opensea. Adidas, for instance, offers NFTs as souvenirs for participants of real or virtual events.

Entering the Metaverse is an excellent opportunity to spread your reach to more consumers in a new world and be able to collect information based on how consumers behave and act in the Metaverse. Data collected from the Metaverse can be used to increase sales in the real world. In both the real world and the Metaverse, this data can then be used to increase sales and brand awareness.

Why you need new trademark registrations now

There is a surging number of new applications submitted to the EUIPO, the UKIPO and the USPTO seeking to register trademarks for use of their brand in virtual reality. Considering that more and more companies are entering the Metaverse, developing a brand protection strategy becomes ever more important.

Even if you do not (yet) want to offer NFTs or other digital assets, it is advisable to take precautions under trademark law now. As recently reported by our US colleagues Deborah Lodge and Shyloah Daniel on this blog, French luxury design house Hermès started litigation against “MetaBirkin” NFTs created by digital artist Mason Rothschild. Whilst protection of reputation may spill over to the Metaverse, the requirements to substantiate claims are usually higher and in some countries, the threshold of reputation may not be reached. In such cases, a trademark registration in Classes 09, 35, 41 and 42 can be decisive. Given that a multitude of infringements will take place on Metaverse platforms, trademark registrations in these classes may also be required by operators of such platforms to implement takedown procedures.

We further recommend filing new trademarks in order to provide a basis for additional revenue streams by licensing. In existing license relationships, it may become crucial to determine who holds the rights to market products in the Metaverse. In order to avoid misunderstandings, additional agreements that regulate the use of the brand in the Metaverse are key. Before entering into re-negotiations with licensees, however, right owners are well advised to extend the scope of protection of their brand to the digital world first.