Latin America. The world has presented us with the 'Metaverse' as the future of the dynamics of socialization, not only of its company but of humanity, a concept that could be summarized in a virtual reality world in which people could socialize, play and work. While for many it remains very diffuse, it invites trademark owners to begin to understand what tools they have to protect their rights in this parallel virtual world.
According to Lola Kandelaft, intellectual property expert and Associate Director of CMS Rodríguez-Azuero, there are two questions that need to be answered; the first has to do with the category in which the trademark must be registered in order to apply to virtual goods or services offered in the Metaverse.
"When applying for a trademark registration, the applicant has to choose the class or classes for which he requires protection, and give a detailed list of the goods and / or services that will protect the trademark. In that case, the principle of speciality establishes that the right of exclusive use is limited to those goods or services for which the trademark has been registered. This principle is embodied in the International Classification of Nice, which groups a large list of goods and services into 45 categories," explains the expert.
Now, of these categories none contemplates virtual products such as those offered in the Metaverse, and there are only some virtual services, for example those of "Celebration of virtual exhibition fairs online" or "Entertainment services, namely virtual basketball leagues".
On the other hand, the second question is related to the territory in which I must register my trademark in order for it to have legal effects on the Metaverse.
Currently, territoriality is another principle challenged by the virtual world, since physical borders do not allow to determine with certainty the scope of the right of exclusivity; a situation that for the lawyer is not new, but that, in this regard, "the applicable jurisprudence consists of determining the target audience of a web page or e-commerce store, taking into account the language and currency used, the extension of domain or the destinations to which they offer shipments," he says.
However, to answer both questions, Lola Kandelaft insists that we must wait for the jurisprudential development of the courts, and that the intellectual property rules are updated to adapt to this new reality, one that challenges the central principles of trademark law.