March 18, 2022

Protecting your Brand in the "Metaverse"

The term Metaverse is not new but dates back to the early 1990s, originating in cyberpunk literature and now widely recognized thanks to big tech investments in launching projects within virtual reality platforms.

First and foremost, Mark Zuckerberg's former Facebook, now called META, the holding company of the Group that manages the Facebook, WhatsApp, and Instagram platforms, has already announced its partnership with Sandbox (an online platform that reproduces a structure similar to the real world).

Computer giant Microsoft has also announced that it will interact with the Metaverse via the Teams platform with a feature called Mash, where users can create avatars and participate in work meetings with them.

But how does the Metaverse work, and what real opportunities exist for businesses in this cyberspace?

The metaverse is a digital universe, a virtual reproduction of our reality (much more colorful and hopefully less complicated), which can be accessed via an avatar—a sort of caricature of ourselves—to interact with other avatars, attend concerts, basketball games, and, above all, go shopping.

Indeed, virtual stores are springing up where people can purchase plots of land, houses, and fashion accessories (shoes, bags, clothing, jewelry) for their digital alter egos.

Several of the most important fashion houses have already announced their imminent (or already active) participation in these virtual platforms (Decentraland, Sandbox, and Stageverse, to name a few). A pioneer of this initiative is undoubtedly Nike, the sportswear giant, which has created its own virtual corner (Nikeland) on the Roblox gaming platform where avatars can enter digital showrooms and dress in Nike designs.

Visibility in these digital spaces is effectively revolutionizing traditional sales and marketing techniques. Product sales, promotional events, and advertising campaigns can all be conducted virtually. The future that the Metaverse holds for companies represents a great opportunity to move toward an innovative economic model capable of creating new investment and, of course, profit opportunities.

It's clear, therefore, that corporate brands will play a fundamental role in the parallel world of the Metaverse, and it's crucial to adequately protect their distinctive signs in relation to the products they market and services they offer in the 2.0 world.

Fashion companies such as the aforementioned Nike, Gucci, and Prada, as well as food and beverage companies such as McDonald's and Monster Energy, have filed trademarks for products and services outside their usual business: virtual products in Class 9, online retail services for virtual products in Class 35, and virtual entertainment services in Class 41. But what could be the implications of improperly protecting your trademarks for digital products and services?

In our opinion, registering and using your trademark for the products and services you're interested in in the physical world also offers protection for similar digital products and services in the virtual world. However, to effectively block third-party filings of similar trademarks in the digital goods and services classes (for example, Classes 9 and 35), it is recommended to extend your trademark protection to these classes as well.

The team of Gallo & Partners consultants is of course at your disposal to provide further information on this topic.

Martina Polo

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