I am not an expert in technology, and certainly not the Metaverse. My understanding of the Metaverse and its potential is heavily influenced by Ernest Cline's 2011 novel 'Ready Player One'. However, the current buzz around the Metaverse, fuelled by Facebook Inc's recent rebrand to Meta and the publicity surrounding the purchasing of virtual real estate inside the Metaverse (referred to as "surreal estate" by Ernest Cline), has piqued my interest and prompted me to think about the trade mark implications of the Metaverse for client charities.
By the Metaverse, I am referring to an immersive and interactive online world, inhabited by digital representations of people, places and things in which users can experience digital lives (socialising, shopping, being entertained, learning, etc.), accessed and experienced using virtual reality (VR) headsets and other sensory technology, all underpinned by enabling technologies such as blockchain that provide secure and verifiable ownership of digital assets.
Experts predict that the Metaverse might not fully take off until at least 2030. Of course, there's a chance that the Metaverse might not take off at all, but it certainly should not be dismissed lightly. (Hands up if you initially dismissed bitcoin as a fad)
Big brands are already preparing to 'set up shop' in the Metaverse by seeking to protect their trade marks in relation to virtual goods and services, and many have already launched their virtual offerings. By way of example, PUMA is being registered for virtual footwear, McDONALD'S for virtual food, and KIEHL'S for virtual perfumery and cosmetics. Whilst virtual food and perfumery might seem bizarre, the sheer scale of investment in the Metaverse cannot be ignored.
What does this have to do with charity trade marks?
A number of things.
First, charity leaders should consider whether the Metaverse provides new opportunities to further the charity's objects. These new opportunities might arise in the physical or virtual worlds. In relation to the former, accessibility is likely to be an issue due to the cost of VR hardware necessary to access the Metaverse, and specific assistive technology will be required by those with impaired senses or movement. In relation to the latter, imagination is the only limit. Virtual charity merchandise, virtual education services and virtual fundraising should all be considered as a starting point. The charity's key trade marks should be protected in relation to the new opportunities identified.
Secondly, charities face opportunistic trade mark applications by trade mark squatters whenever new technologies or areas of activity arise. Trade mark squatting occurs when someone registers a trade mark owned by another party. Depending on the relevant territory, the squatter's trade mark registration could then prevent the rightful trade mark owner from registering its own trade mark without first legally challenging or acquiring the squatter's registration, neither of which are cheap options. Protecting your charity's trade marks at an early stage in relation to the relevant virtual goods and services will help to avoid this.
Thirdly, virtual trade mark infringement could be an issue. While a charity's trade mark registration covering, for example, physical merchandise and real-world education services might be enforceable against an infringer selling virtual charity merchandise and virtual education services under a similar trade mark, the charity's rights would be stronger if the charity trade marks were protected in relation to the relevant virtual merchandise and education services.
To conclude, the Metaverse provides a useful reminder that time and technology are constantly advancing. Charities should schedule routine audits to check that their trade mark portfolios are fit for purpose - i.e. ensuring that the trade marks currently used by the charity are protected, in the territories in which they are used, and in relation to the goods and services for which the charity uses them. These audits should also look ahead to future uses of the charity's trade marks, including any new initiatives or branding about to be introduced, and any technological advances (such as the Metaverse) that provide new opportunities to further the charity's objects. While it could still be too early for charities to invest resources in the Metaverse for its own sake, if a charity is seeking trade mark protection for other reasons (e.g. on rebranding), seeking protection for virtual goods and services should be seriously considered.
Paula Williams is a partner at VWV LLP. She is a dual-qualified solicitor and chartered trade mark attorney and leads VWV's trade marks team.
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