Trademark protection in the digital world – is the law keeping up with virtual reality?

The tension between trademark protection for traditional goods and services and the virtual world has been attracting increasing attention in recent years. Fashion companies are trying to secure their logos in the metaverse, and NFTs (non-fungible tokens) are becoming the subject of legal discussions.

Virtual goods as real products? Groundbreaking EU court ruling

At the end of 2024, the General Court of the European Union (First Chamber) issued a landmark ruling in the Glashütte ORIGINAL trademark case, providing the first trademark guidelines for intangible goods. The word and figurative mark under consideration by the court was to be registered for goods referred to as “virtual downloadable products”, more specifically watches in virtual form, created using blockchain technology.

The court treated the aforementioned virtual goods in the same way as physical products.It ruled that if a trademark name refers to a specific place (in this case, a German city known for watchmaking), the consumers of digital goods will associate them with that region as strongly as if the watches were actually produced there.

Importantly, the audience for virtual watches has been defined in the same way as for traditional products. The court stated that the company’s services will be used by both consumers and professionals. The court did not take into account the differences in the perception of the younger generation buying online, even though in another case two months earlier it had ruled that virtual goods cannot be compared to physical goods.

Clearly, the practice of the EU court is not yet well established in this regard.

Brand reputation in the virtual world

Most interestingly, the court denied the possibility of transferring brand reputation from physical to virtual goods. In other words, if the same company first produced quality watches and then offered virtual watches, it could not invoke the reputation of its brand in relation to the latter goods.

According to the court, brand reputation must be “earned” separately for each category of goods.

Trademark registration for virtual goods – what do you need to know?

The EU’s new approach raises doubts among entrepreneurs and their representatives when filing trademark registration applications. Here are some key takeaways:

• Digital items such as apps, video games or NFTs are usually filed in Class 9 (hardware and software).
• Services related to virtual goods may require registration under additional classes, such as Class 41 (entertainment services).
• In the example of a recent European judgment, the notification also concerned online sales services for the aforementioned virtual goods (class 35).

Therefore, when registering a trademark, it is important to carefully determine the scope of the entrepreneur’s planned activity and the level of protection of the trademark in order to indicate the appropriate product classes.

What is the future of trademark protection in the digital world?

Doubts about the protection of virtual goods are still growing, and the practice of EU courts remain inconsistent. One thing is certain – entrepreneurs must be ready for new regulations and strategically plan the registration of trademarks for their digital activities.

Do you have any questions about trademark registration for digital goods? Contact our law firm – we will gladly help you protect your brand.

If you are interested in further legal changes, we encourage you to subscribe to our newsletter.