China Starts Registering Trademarks Filed for NFTs and Virtual Goods in the Metaverse | Quarles & Brady LLP
The Chinese Trademark Office has recently made a groundbreaking decision to approve trademarks for non-fungible tokens (NFTs) and virtual goods and services in the metaverse. This is a significant development as China has previously been hesitant to accept such trademarks. Unlike other major markets like the United States and the European Union, China’s Trademark Office has been slow to adopt new goods and services.
In the past, the Chinese Trademark Office has only accepted trademarks for standard goods and services that are pre-approved by the Office for national trademark applications. This has posed a challenge for companies looking to secure trademarks for NFTs and virtual goods and services. However, recent approvals for luxury watch brands like TISSOT, LONGINES, and RADO indicate a shift in the Office’s stance.
This is great news for companies based in the United States, as Chinese trademark law does not require actual use prior to registration. Additionally, a Chinese national registration is not dependent on the registration of the same mark in the U.S., unlike international registrations filed through the Madrid Protocol.
One interesting aspect is the freedom provided to applicants in customizing the descriptions of virtual goods and services in their trademarks. For example, American beauty product company Coty’s registration for the nail polish brand, SALLY HANSEN, includes an unusually long description that covers various digital designs and characters for use in different online and virtual environments.
However, it is important to note that this may be a temporary exception rather than a permanent relaxation of the requirement for standard goods and services. The Chinese Trademark Office may eventually adopt standardized descriptions for virtual goods and services. Therefore, it is advisable for U.S. applicants to consult the list of standard goods and services before filing new national trademarks in China to avoid any issues.
Another important consideration is how and where registrants should use their trademarks to meet the requirements of use under Chinese trademark law. As the Chinese government aims to promote domestically built digital tokens, NFT transaction platforms, and metaverses, there may be specific criteria for the use of trademarks in China’s own NFTs and virtual platforms. It remains to be seen whether evidence of use in international-based NFTs and virtual platforms will suffice.
In conclusion, the recent approval of trademarks for NFTs and virtual goods and services by the Chinese Trademark Office signifies a significant shift in their approach. This move opens up opportunities for companies, especially those based in the United States, to secure trademarks in China for their NFTs and virtual offerings. However, it is essential for companies to stay updated on any changes in the requirements and guidelines set by the Office to ensure successful trademark registrations.
