The scope of trademark applications is critical in terms of trademark protection and enforcement. Accordingly, it is of utmost importance to accurately analyze, identify and classify the goods and services for which the trademarks are to be applied for and used.
With the latest technological developments, the classification of the newly emerging goods and services has been the subject of various webinars both at the national and international levels, and the European Union Intellectual Property Office (EUIPO) and the United States Patent and Trademark Office (USPTO) had taken relevant approaches and provided its guidance for the classification of these goods and services before the 12th edition of the Nice Classification entered into force from 1 January 2023.
On the other hand, the Turkish Patent and Trademark Office (TÜRKPATENT) has not yet published any official guidelines for the classification of these new goods and services. Nevertheless, the specifications already accepted for TÜRKPATENT registration and the current edition of the Nice classification have shed some light on how to file a trademark application to obtain protection for these goods and services prior to TÜRKPATENT.
Guidance from EUIPO:
As a result of the increasing number of applications containing terms related to virtual goods and non-fungible tokens (NFTs), the EUIPO issued its guidance on the classification of virtual goods, NFTs and the metaverse from 23 June 2022, the main content of which was as follows :
- Since virtual goods are treated as digital content or images, they are appropriate for class 09 but lack clarity and precision on their own, the concept of virtual goods needs to be further defined by clarifying the content to which they relate (e.g. downloadable virtual goods, namely, virtual clothes).
- NFTs are treated as unique digital certificates registered in a blockchain, authenticating but distinct from digital objects. The concept of non-fungible tokens alone is not acceptable, and therefore the type of digital object authenticated by NFT must be defined.
- Services related to virtual goods and NFTs will be classified according to the established principles of classification for services.
USPTO Handout and Handbook:
Similarly, the USPTO has published a handout on “Registration of Trademarks for Emerging Technologies: NFTs, Blockchain, Cryptocurrency, and Virtual Goods,” including descriptions thereof, examples of acceptable identifications involving these emerging technologies, and practice tips, including but not limited to probability – of confusion rejections for real versus virtual goods.
Examples of acceptable identifications involving NFTs in Classes 09, 25 and 35, Blockchain in Classes 09, 35, 36 and 42, Cryptocurrency in Classes 09, 36, 42 and 45 and Virtual Goods in Classes 09, 35, 41 and 42 which took place in the awarding of the USPTO is of a nature to provide guidance for applicants who intend to apply for trademarks covering goods and services related to these technologies.
Likewise, the current version of the Trademark ID Manual provides the USPTO with guidance for classifying these new goods and services.
12th edition of the Nice classification:
The 12th edition of the Nice Classification entered into force from 1 January 2023 and addresses the classification of new goods and services by updating certain classes in line with recent technological developments.
Some of the modifications introduced through this current edition of the Nice Classification in relation to the classification of NFTs, metaverse and crypto assets are as follows:
Class 09 has been updated through;
- addition of “downloadable digital files authenticated by non-fungible tokens [NFTs]” and
- changing “downloadable computer software for managing cryptocurrency transactions using blockchain technology” as “downloadable computer software for managing cryptoasset transactions using blockchain technology” with the term “cryptocurrency” already existing in the previous edition replaced by the broader term “cryptoassets” clearly including NFT- is.
Class 41 has been updated with the addition of “offering virtual guided tours online”, which features metaverse activities.
Class 42 has been updated through the change of “cryptocurrency mining / cryptomining,” as “mining of crypto assets / cryptomining” which replaces the term “cryptocurrency” that already existed in the previous edition with the broader term “cryto asset.”
Some of the specifications involving crypto-assets, blockchain and virtual goods and services in classes 09, 36 and 42 remained the same as the previous edition of the Nice classification.
Approach to TURKISH PATENT:
TÜRKPATENT has adopted a classification system to be used as a basis for trademark applications in accordance with the Nice classification. The latest regulation on the classification of goods and services related to trademark applications adopted by TÜRKPATENT was published in the Official Gazette dated 20 December 2016 and entered into force from 1 January 2017.
After the webinar held by TÜRKPATENT on 27 October 2022 on “Classification of goods/services for trademark applications” which included discussions on the classification of the new technologies, including NFTs and virtual goods, it was expected that a new regulation would enter into force at the beginning of this year in accordance with the recent edition of the Nice classification. However, no changes have been made to the classification system of TÜRKPATENT so far, and TÜRKPATENT has not yet published a guideline on the classification of goods and services in connection with the new technologies.
In the meantime, however, goods and services related to these new technologies have been included in the scope of various trademark registrations obtained before the TÜRKPATENT.
Levi Strauss & Co. has, for example, obtained national registrations for six trademarks under no. 2022 037989, 2022 038005, 2022 038026, 2022 038056, 2022 038082 and 2022 038139 in classes 9, 35 and 41, including for the following goods and AT-PENT services:
09: Downloadable virtual goods, namely digital images, digital clothing and digital graphic designs authenticated by non-fungible tokens created using blockchain technology to represent a collectible.
35: Collection, for the benefit of others, of virtual goods, namely clothing made of any kind of material, …, images and videos for use in online virtual environments and online virtual fashion shows to enable customers to easily view and purchase these goods ( such services may be provided by retail stores, wholesalers, electronic media, through mail order catalogs and other similar services).
41: Entertainment services, namely providing online non-downloadable virtual goods, in the form of clothing, …, images and videos for use in online virtual environments and online virtual fashion shows.
Tether Operations Limited has obtained national trademark registrations under Reg Nos. 2022 104344 and 2022 120989 in classes 09, 36 and 42, including but not limited to, “…downloadable computer software for managing cryptocurrency transactions using blockchain technology…” in class 09, “… financial exchange of crypto-assets; … ; financial services provided via blockchain” in class 36 and “… financial blockchain platform development services; design, development, implementation and consulting in the field of blockchain software …” in class 42.
The national trademarks of CHAMBRE DE COMMERCE INTERNATIONALE under No. 2021 026993 and 2021/027011 have been accepted for registration inter alia for “banking, investment and transfer services for crypto-assets, including in relation to cryptocurrencies” and “custodial services in relation to crypto-assets including cryptocurrencies ” in class 36 before TÜRKPATENT.
These are just a few examples, including specifications involving blockchain, virtual goods, NFTs and other crypto-assets accepted before TÜRKPATENT.
It should be noted that a significant amount of trademark applications submitted to TÜRKPATENT, especially by Turkish real and legal entities, directly use the classification of goods and services published by TÜRKPATENT dating back to 2017.
In light of the above, and for the time being, it should be important for applicants to check the recent edition of the Nice Classification in addition to the current classification used by TÜRKPATENT to define the exact scope of their trademark applications to be submitted before TÜRKPATENT adheres Keep in mind that the current TÜRKPATENT classification has not yet been updated to include goods and services related to these new technologies, and the scope of trademark applications is critical in terms of trademark protection and enforcement.
