This disclosure aims to illustrate some issues that arise in relation to trademarks and which are connected to the so-called Metaverse.

The latter term identifies an online virtual space within which individuals can move and interact with each other through their own customized three-dimensional graphic representations, called avatars. In fact, users have the opportunity to create their own home, carry out activities, participate in events, buy clothes for their wardrobe, cars in which to run fast, and more generally goods of all kinds.

As far as brand owners are concerned, this new – and in some respects not exactly reassuring – parallel reality can create significant opportunities, but also risks. Without claiming to be exhaustive, among the first the possibility that the owner of a trademark has to increase its reputation and study the habits of its consumer to better retain it. Among the dangers it should be mentioned the possibility that the metaverse becomes a virtual place for violations as harmful as those that occur in the real world. It is the latter aspect that must specifically concern the IP consultant.

In general terms, it can be noted that the use of a trademark in virtual reality should not lead to exceptions to the general principles valid on the subject. However, it is true that the concrete application of these principles to this world may be uncertain in some cases.

So if we examine the issue of the “virtual” effectiveness of trademark registrations already in place, I am inclined to believe that the use of a sign identical or similar to yours by third parties to distinguish products / services identical or similar to yours. but of a virtual nature, may in thesis be prohibited or (if of interest) regulated (for example through licenses) on the basis of existing rights, arguing (depending on the case) in the classic terms of the identity / similarity between the signs, of the merchandise affinity, the risk of confusion and exploitation of the reputation (if recurring).

On the other hand, it is also true that if you are interested in operating directly in the metaverse, the availability of ad hoc registrations is recommended in order to make the protection of your trademarks more specific and, thus, complete and easy. It follows the opportunity to carefully evaluate the possibility of updating existing registrations to also include the use of the related products / services in virtual reality, and so by way of example only:

• class 9: “downloadable virtual goods”
• class 35: “retail services of virtual goods”;
• class 41: “online entertainment services”.

To cite just a few examples, Nike, L’Oréal and McDonalds have already submitted several requests in this regard.