The scope of trademark applications is crucial in terms of trademark protection and enforcement. Accordingly, it is of utmost importance to accurately analyse, identify and classify the goods and services, for which the trademarks are intended to be applied for and used.
With the recent technological developments, the classification of the newly emerging goods and services has been the topic of various webinars both at the national and international level, and the European Union Intellectual Property Office (EUIPO) and the United States Patent and Trademark Office (USPTO) had taken relevant approaches and provided their guidance for the classification of these goods and services before the 12th edition of the Nice Classification came into effect as of January 1, 2023.
On the other hand, the Turkish Patent and Trademark Office (TÜRKPATENT) has not yet published any official guidelines for the classification of these newly emerging goods and services. Nevertheless, the specifications that have already been accepted for registration by TÜRKPATENT and the current edition of the Nice Classification have shed some light on how to apply for a trademark application to gain protection for these goods and services before TÜRKPATENT.
Guidance from the EUIPO:
As a result of the increasing number of applications containing terms relating to virtual goods and non-fungible tokens (NFTs), the EUIPO provided its guidance about the classification of virtual goods, NFTs and the metaverse as of June 23, 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 lacking clarity and precision alone, the term virtual goods must be further defined by clarifying the content to which they relate (e.g., downloadable virtual goods, namely, virtual clothing).
- NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital items but are distinct from them. The term non fungible tokens alone is not acceptable, and thereby the type of digital item authenticated by the NFT must be defined.
- Services that are related to virtual goods and NFTs will be classified in accordance with the established principles of classification for services.
Handout and Manual of the USPTO:
Similarly, the USPTO has published a handout about “Registering trademarks for newer technologies: NFTs, blockchain, cryptocurrency, and virtual goods”, including descriptions thereof, examples of acceptable identifications involving these newer technologies and practice tips, including but not limited to likelihood-of-confusion refusals 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 that took place in the handout of USPTO are of a nature to provide guidance for the applicants that intend to apply for trademarks covering goods and services related to these technologies.
Similarly, the current version of the Trademark ID Manual of the USPTO provides guidance for the classification of these newly emerging goods and services.
12th Edition of the Nice Classification:
The 12th edition of the Nice Classification came into effect as of January 1, 2023 and addresses the classification of newly emerging 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 connection with the classification of NFTs, the 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
- amendment of “downloadable computer software for managing cryptocurrency transactions using blockchain technology” as “downloadable computer software for managing crypto asset transactions using blockchain technology” with the term “cryptocurrency” that already existed in the previous edition replaced by the broader term “crypto asset” clearly including NFTs.
Class 41 has been updated with the addition of “providing online virtual guided tours,” containing metaverse activities.
Class 42 has been updated through the amendment of“cryptocurrency mining / crypto mining,” as “mining of crypto assets / crypto mining” replacing the term “cryptocurrency” that already existed in the previous edition with the broader term “crypto 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 of TÜRKPATENT:
TÜRKPATENT has adopted a classification system to be used as the 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 on the Official Gazette dated December 20, 2016 and came into effect as of January 1, 2017.
After the webinar held by TÜRKPATENT on October 27, 2022 about the “Classification of Goods/Services of Trademark Applications” that included discussions about the classification of the newly emerging technologies, including NFTs and virtual goods, a new regulation was expected to come into force in the beginning of this year in accordance with the recent edition of the Nice Classification. However, no amendments have been made to the classification system of TÜRKPATENT so far, and TÜRKPATENT has not published a guideline about the classification of goods and services in connection with the newly emerging technologies, yet.
In the meantime, however, goods and services pertaining to these newly emerging technologies have been included in the scope of various trademark registrations obtained before TÜRKPATENT.
For instance, Levi Strauss & Co. has obtained national registrations for six trademarks under nos. 2022 037989, 2022 038005, 2022 038026, 2022 038056, 2022 038082 and 2022 038139 in classes 9, 35 and 41 inter alia for the below-listed goods and services before TÜRKPATENT:
09: Downloadable virtual goods, namely, digital images, digital clothing, and digital graphic designs authenticated by non-fungible tokens created with blockchain technology to represent a collectible item.
35: The bringing together, for the benefit of others, of virtual goods, namely, clothing made of any kind of material, … , images, and videos for use in virtual online environments and virtual online fashion shows to enable customers to conveniently view and purchase those goods (such services may be provided by retail stores, wholesale outlets, means of electronic media, through mail order catalogues and other similar services).
41: Entertainment services, namely, providing on-line, non-downloadable virtual goods, in the nature of clothing… images, and videos for use in virtual online environments and virtual online fashion shows.
Tether Operations Limited has obtained national trademark registrations under Reg. No. 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 “… blockchain financial platform development services; design, development, implementation, and consultancy in software in the field of blockchains …” in class 42.
The national trademarks of CHAMBRE DE COMMERCE INTERNATIONALE under nos. 2021 026993 and 2021/027011 have been accepted for registration inter alia for “crypto asset banking, investment and transfer services including in relation to cryptocurrencies” and “custody services in relation to crypto assets including cryptocurrencies” in class 36 before TÜRKPATENT.
These are only a few examples including specifications involving blockchain, virtual goods, NFTs and other crypto assets accepted before TÜRKPATENT.
It should be noted that a considerable amount of trademark applications filed before TÜRKPATENT especially by Turkish real and legal entities directly use the classification of goods and services published by TÜRKPATENT dating back to 2017.
In the light of the above, and for the time being, it should be important for applicants to check the recent edition of the Nice Classification besides the current classification used by TÜRKPATENT to define the exact scope of their trademark applications to be filed before TÜRKPATENT keeping in mind that the current classification of TÜRKPATENT has not yet been updated to include goods and services related to these newly emerging technologies and the scope of trademark applications is crucial in terms of trademark protection and enforcement.