UK IPO sets the standard for NFT trademark classification – Cryptopolitan

The United Kingdom Intellectual Property Office (UK IPO) has recently issued a Practice Amendment Notice (PAN) to clarify the classification of non-fungible tokens (NFT) and related goods and services in trademark applications.

The move is in response to the growing number of applications and requests for guidance on the matter, as NFTs continue to gain traction in various industries.

Clarification of the classification of NFTs

NFTs have emerged from cryptocurrency networks as unique digital tokens that represent ownership of virtual or physical assets, such as art, collectibles, and game items.

Due to the rapidly evolving nature of NFT technology, the UK IPO aims to provide clear guidance to assist applicants in the classification process, with plans to update the guidance as new developments occur.

As “NFT” alone is considered inherently vague, the UK IPO will not accept it as a stand-alone classification term. Instead, applicants must specify the asset to which the NFT relates.

For example, terminology such as “digital art authenticated by non-fungible tokens [NFTs]” or “downloadable digital files authenticated by non-fungible tokens [NFTs]” will be accepted in class 9 of the Nice classification system.

Incorporating NFTs into physical goods and services in the UK

While NFTs are primarily associated with digital assets, they can also be used to authenticate physical goods. Accordingly, the UK IPO will accept clearly defined physical commodities authenticated by NFTs in the relevant commodity class.

For example, “artwork, authenticated by non-fungible tokens [NFTs]” would be classified under Class 16, while “handbags, authenticated by non-fungible tokens [NFTs]” would be placed in class 18.

Furthermore, the UK IPO will accept NFT-related terminology in Class 35 for retail services and online marketplaces.

Virtual services and Metaverse

The PAN also addresses the classification of virtual goods and services, including those offered in the metaverse. Virtual goods, which consist primarily of digital images or data, will be classified under Class 9 if they are clearly defined, such as “downloadable virtual clothing, footwear or headgear.”

During the pandemic, many traditionally personal services shifted to virtual means via internet-based applications. The UK IPO will continue to accept such services, including those offered in the metaverse, a digital reality where users can access virtual worlds and interact with others.

Examples of acceptable terminology in this area include “educational and training services provided via the metaverse [class 41]” and “conduct interactive auctions via the metaverse [class 35].”

In cases where provision of services via the metaverse is mentioned but not immediately apparent, UK IPO examiners will seek clarification from applicants.

If an examiner considers the specification of a trade mark application to be vague, they will issue a statement of opposition under Rule 8(2)(b) of the Trade Marks Rules 2008. Applicants will have two months to submit written comments in response to or request a hearing.

This progressive approach by the UK IPO sets a standard for the classification of NFTs into trademarks, providing much-needed guidance in the rapidly changing world of digital assets and virtual goods and services.