A Guide to Trademark Classification for Virtual Goods, Metaverse, NFTs, and Blockchain

In recent years, the global intellectual property community has been experiencing a revolutionary change in relation to virtual goods, the metaverse, NFTs (non-fungible tokens) and blockchain. IP Australia has noticed this trend and has witnessed a significant increase in the number of trademark applications related to these digital innovations.

IP Australia’s latest guidelines aim to clarify the classification practices for these emerging technologies in trademark applications. This means that they are actively adjusting their classification methods to respond to rapidly changing technological needs. In order to promote consistency within the industry, national IP offices are working together to promote international unification of classification standards.

Marking an important turning point in the trend, the new items will be officially included in the 12th edition of the Nice Classification from January 1, 2024. The Guide shows that Australia has quickly adapted to these new classification items, which are effective immediately, demonstrating its keen industry insight and adaptability.

Virtual goods

• Virtual goods are digital objects used in online virtual environments. Since they are essentially data, they should be classified in Class 9. However, vague terms such as "virtual goods" or "downloadable goods" are not accepted, and the nature of the specific goods (such as software, image files, music or clothing, etc.) must be clearly stated when applying.
• Example:
  • Category 9: downloadable virtual clothing; services related to virtual goods will be classified into other categories depending on the nature of the services.
  • Class 35: Online retail services of downloadable virtual clothing

Metaverse and virtual environments

• As the market develops, services are increasingly provided in virtual form. Applicants often use terms such as "metaverse", "virtual environments" and "Web3" to describe online spaces where users interact. IP Australia accepts the use of "metaverse" and "Web3", but prefers the use of "virtual environments" because it is more applicable in a variety of contexts.
• Example:
  • Class 41: Entertainment services provided in a virtual environment
  • Class 42: Hosting services for virtual environments
• When IP Australia classifies services in a virtual environment, it focuses on their impact on the real world. If the purpose of the virtual service is consistent with the real world, it will be classified in the same way as the real world. For example:
  • Educational services, whether virtual or in-person, of uniform impact → Category 41
  • Banking business involving the transfer of real funds → Category 36
  • However, if the services in the virtual environment are only virtual behaviors, such as the character "eating" in a virtual restaurant, it does not belong to catering services (Class 43) but should be classified as entertainment services (Class 41). Similarly, virtual tourism simulation does not involve actual transportation and is classified as Class 41, not Class 39 transportation services.

Non-Fungible Tokens (NFTs)

• NFTs are unique tokens that exist on a blockchain and are used to record ownership of an asset (e.g. digital artwork, collectibles). NFTs are not goods or services in themselves, but rather a means of authentication. IP Australia will not accept a declaration of “NFT” or “Non-Fungible Token” as it lacks specificity. The specific goods being authenticated must be stated.
• Example:
  • Category 9: Downloadable digital image files authenticated by NFT
  • Category 9: Downloadable digital music files authenticated by NFTs
• NFT-related services also need to be clearly defined, for example:
  • Class 35: Retail services related to downloadable digital image files authenticated by NFTs
  • Class 42: Providing online non-download computer software services for minting NFTs
• NFTs can also be used to authenticate physical goods (such as digital tokens tied to artworks and fashion products). In this case, they should be classified according to the corresponding product category.
• Example:
  • Category 25: Clothing authenticated by NFT

Blockchain

• Blockchain is a distributed database that records encrypted data blocks and is widely used in areas such as cryptocurrency, finance, gaming and digital authentication. IP Australia will not accept the term "blockchain" as a descriptor of goods or services because it lacks specificity. Classification should make it clear that blockchain is a functional feature of the goods or a way of providing services.
• Example:
  • Category 9: Downloadable computer software for use with blockchain technology
  • Class 36: Electronic funds transfer services provided through blockchain technology
  • Class 42: Computer programming services for smart contracts on blockchain