Brand protection in virtual worlds is now ready!

In brief

Companies/brand owners have seen the vast business opportunities that virtual worlds offer and are eager to swiftly make their mark to stay ahead of the competition. In response to the increasing interest in virtual worlds and in support of brand owners’ rights, Thailand has now developed specific protection for trademarks/service marks in virtual worlds that will be discussed further below.

In more detail

With technology advancing at an exponential rate, soon we should be able to see the Metaverse in its fully realized form. At the moment, millions of users around the world can easily access a variety of virtual products and services. Virtual goods/services may, in practice, be created by bearing a company’s trademark without proper authorization and subsequently made available in virtual worlds by unauthorized actors looking to free ride on others’ commercial benefits. In such cases, sales and benefits relying on the goodwill of a brand may be accrued by infringers rather than the brand owner.

Without specific trademark protection of virtual goods/services, brand owners need to use considerable efforts to combat infringement in virtual worlds. They will be required to prove the existence of their rights through arguments utilizing well-known trademarks and relying on general provisions of law rather than specific trademark law.

Enforcement action that hangs on an unregistered right or a registered trademark which does not adequately cover the respective virtual goods/services requires a substantial amount of concrete evidence of extensive use, which could cause hardship for brand owners.

Securing the exclusive rights and proper protection of their trademarks to be used for virtual goods/services will alleviate the burden on brand owners to prove the existence of trademark rights and protection in the Metaverse or virtual worlds. The Thailand Department of Intellectual Property (DIP) has recently adopted designated specifications for virtual goods and services, similar to those of the European Union Intellectual Property Office (EUIPO) and the United States Patent and Trademark Office (USPTO).

These include a hundred specifications of virtual goods/services and those related to non-fungible tokens (NFTs) in their sample of acceptable specifications. For example:

Virtual goods

• “Downloadable virtual goods in the form of bags for use in online virtual worlds”
• “Downloadable virtual goods in the form of sports equipment for use in online virtual worlds”
• “Virtual reality game software”
• “Augmented reality training simulation software in the field of information technology”

Virtual services

• “Presentation of goods to customers for choosing through online virtual world network”
• “Retail store services featuring virtual goods for use in online virtual worlds”
• “Providing access to an online virtual community via the internet or mobile”
• “Providing virtual computer systems through cloud computing”

NFTs

• “Downloadable computer software for creating and managing virtual goods authenticated by non-fungible tokens [NFTs]”
• “Downloadable graphics authenticated by non-fungible tokens [NFT]”
• “Provision of an online marketplace for buyers and sellers of downloadable virtual environments authenticated by non-fungible tokens [NFTs]”
• “Blockchain as a service [BaaS] for creating and managing non-fungible tokens [NFTs] in the form of cyber-pets”

The adoption of such practice could reflect the Thailand DIP’s perspective that these virtual assets would have different natures and purposes from those used in real life. Specific protection of virtual goods/services commercialized in the Metaverse should thus be properly sought through registration.

To apply for protection of virtual branded goods/services, brand owners must file an application with the DIP’s Trademark Office. A trademark registrar will examine the trademark/service mark application for virtual branded goods/services. If there are no issues with regard to distinctiveness, confusing similarity, specifications of virtual goods/services, or any other formalities, the trademark/service mark will be published in the official Trademark Gazette for 60 days from the date of publication. During this period, it is open for those who claim to have a better right to the trademark/service mark to oppose the publication. If there is no such opposition, the trademark/service mark will mature to registration.

By virtue of registration, the trademark/service mark for virtual goods/services will obtain maximum protection under the Thai Trademark Act. Brand owners who obtain the registration can enjoy the exclusive right to the brand in virtual worlds and prevent others from using an identical or confusingly similar mark for the same or related virtual goods/services.

As Thailand adopts a “first to file” system, obtaining a trademark registration for virtual goods and services will allow brand owners to effectively commercialize virtual products and services, maximize benefits, and prevent bad-faith or infringing activities by third parties who seek a way to free ride on the reputation of the brands and try to take advantage of that in emerging markets.

For more information, please contact us.

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