Burberry - Frida Kahlo

Trade marks and metaverse: new challenges, old solutions?

The development of new technologies has a strong impact on the protection granted by Intellectual Property Rights. Will the selling in the metaverse of a product which infringes a trade mark be considered an infringement? It is too early to have a complete theory, but each day new expert opinions (and even decisions) are (slowly) clarifying the current scenario.

One example is the recent decision from the European Union Intellectual Property Office (dated 8/2/2023) which refuses a trade mark application filed by ‘Burberry Limited’ to protect, among other goods and services, ‘NFTs’ (Class 9 of the Nice Classification).

The relevant application is a figurative mark comprising the well-known Burberry pattern.

The EUIPO considered that the ‘NFT’ included in the applicant’s list of goods cover downloadable and virtual versions of clothes or footwear. As the figurative mark is a pattern intended to be placed in the good, the assessment should be based on the same principles applicable to ‘ordinary’ tridimensional marks. In particular, the Office states that ‘consumer’s perceptions for real-world goods can be applied to equivalent virtual goods as a key aspect of virtual goods is to emulate core concepts of real-world goods’.

In addition, the EUIPO stated that the pattern is not different from other patterns used by other companies. As a consequence, the sign is devoid of any distinctive character for, among others, NFT goods and, therefore, the application should be rejected for these goods.

As can be seen, despite the fact that NFT are downloadable elements included in Class 9 of the Nice Classification, the trade mark analysis carried out by the EUIPO is, at the end, the same than for ‘real world’ goods.

Immersive Frida Kahlo exhibit vs. Frida Kahlo. Case number 003154877 Opposition not admissible

On 17/09/2021 the holders of the non-registered mark “Frida Kahlo” filed an opposition against an application for the sign “Immersive Frida Kahlo exhibit”, for all the services covered by the application in class 41.

Initially, the EUIPO admitted the opposition. However, the Office changed its opinion and informed the parties about its intention to revoke it. The reason is that, in the opposition, the EUIPO appears as a territory for a non-registered trade mark. In the observations, the opponent replied that it was an error and asked for a correction, trying to replace EUIPO by the 27 Member States of the European Union.

According to EUIPO, the reason behind not accepting this correction resides in the fact that the indication of the territory of an earlier right is an absolute admissible deficiency. Moreover, the opponent had a two-month period to solve it.

Also, whilst non-registered trade marks are only defined and recognised in some national legislations, other countries such as Spain, France or Belgium among others, do not recognise them at all.

Contrary to the Community Design Regulation, which includes the category of “unregistered Community Design”, the EUTMR does not acknowledge the category of non-registered trade marks, meaning that non-registered trade marks are not protected at European level. According to Article 6 EUTMR the only way to obtain a European Union trade mark is by registration.

According to EUTMDR, (Article 2 (2) (b)) “the opposition must contain a clear identification of the earlier mark or earlier right on which is based”. When the opposition is based on an earlier right, said earlier right has to exist in the whole European Union or in one or more Member States. In the case of an earlier mark, the Office will reject the opposition if the opponent does not amend the deficiencies before the expiry of the opposition period. 

Finally, after the expiration of the set time limit and the lack of amendments, the Office informed the opponent that the deficiency could not be remedied and thus considered the opposition inadmissible.