Metaproperty and trade marks classification: all NFTs are not the same

As my colleague Simon Portman explains, the UK's High Court has held that NFTs are items of property, which is particularly important in preventing theft of what can be an astonishingly valuable asset.

Businesses venturing into the metaverse are already keen to protect their trade marks so as to include virtual equivalents of their real products, and will no doubt welcome this acknowledgement of a property right in NFTs. But how will we classify this new "metaproperty", for trade mark registration purposes? Is a virtual item the same as a real one?

At the moment, the answer to that question seems to be no. Class 9 covers software products and electronic publications, and is an obvious choice in recent trade mark applications by businesses entering the metaverse. Wouldn't it be more logical though, for metaproperty to be classified together with the physical items it represents? Let's put digital trainers in class 25, and digital bags in class 18. Why? There are two reasons: cost, and risk. 

If every fashion retailer has to include class 9 in new trade mark applications, along with their usual classes 18, 25 and so on, that means an extra class application fee to pay every time. This isn't a huge problem, as in the UK at least, application filing fees are quite reasonable - and maybe you want to have class 9 anyway, for eyewear.

Risk is the far bigger issue. It's good policy to conduct a trade mark clearance search for new brands before using them or applying to register, to see if anyone else has got there first. If all NFTs are in class 9, the number of trade mark registrations in this already enormous class of goods will grow exponentially. Trade mark attorneys will have a vast amount of information to sift through before they can advise. Opinion preparation will take longer and that in turn increases the cost to businesses. All NFTs may be similar in nature, but the purpose of each individual metaproperty item varies wildly. It would be far cheaper, easier and I think more sensible to say no: all NFTs are not the same, and shouldn't be classified together.

Perhaps what we need is a test case...