This article will focus on how trademark owners can better protect their trademarks, In non-homogeneous tokens (NFT) And unique issues arising in trademark disputes related to Meta Universe, And the challenges that claimants face due to the unique nature of blockchain technology——These unique features do not exist in traditional trademark disputes.

Discussion point

－Business owners should consider expanding the scope of their trademark registration, In order to NFT Goods and services related to the meta-universe are included;

－Legal proceedings may be instituted against unidentified defendants;

－In view of NFT It is permanent in nature (Because blockchain technology does not allow deleting or changing the blockchain ledger) , Traditional remedies may not be as effective.

introduce

Since the 2020 Since these years, "metaverse" The word has always been a buzzword. From a non-technical point of view, The meta-universe can be broadly described as an immersive three-dimensional (3D) Virtual world network, Among other goals, It also seeks to replicate the real physical world.

At the same time as the trading of crypto assets is gaining popularity, NFT It's also starting to be a useful tool in the meta-universe. They allow assets to be traded in the meta-universe by representing digital assets on the blockchain. This facilitates public tracking of ownership on the blockchain ledger (As a proof of ownership and authenticity) , And opens up a whole new world of possibilities in terms of monetizing digital assets and content.

With these developments, Whether in the physical world or in the virtual world, trademark, Both trade name and trade appearance protection are of enduring relevance. Use NFT New ways to transact in the meta-universe mean, Traditional approaches to trademark protection and trademark dispute resolution are still relevant, But it may need to be used in new and creative ways, And may be extended in a principled way, So that it can provide adequate protection to the trademark owner.

Expansion of traditional trademark protection

The Intellectual Property Office of Singapore has established 2023 years 2 month 10 The day was published with the title "NFT And metaverse related goods／Classification practices of services" The number of 2/2023 Call number, Clarified the trademark registration authority in NFT And practices in the classification of goods and services in relation to trademark applications in the meta-universe.

This classification is not unique to Singapore. "Nice classification" The number of 12 New categories have also been added, In order to meet NFT And demand for crypto-related goods and services. same, UK Intellectual Property Office in 2023 years 4 month 3 The day was released about the meta-universe provided NFT And virtual goods and services classified PAN 2/23 Statutory guidance. especially, The guidelines emphasize, NFT Will not be accepted as a separate classification term, And describe the need and NFT The related assets are related.

A common problem with traditional trademark protection is the need to seek protection in multiple jurisdictions, The emergence of the meta-universe makes this problem even worse. In principle, Trademark protection has the nature of jurisdiction, A trademark registration only grants the owner of the trademark a legal monopoly over the trademark within the jurisdiction of the registration. Traditional trademark protection often advises companies to prepare for a rainy day, Seek early protection of its trademarks in the jurisdictions where it does business and in the jurisdictions where it may do business in the future.

however, The goal of the meta-universe is to become a seamless one 3D Virtual world, It can be accessed from anywhere in the physical world. therefore, In a single jurisdiction is NFT Filing trademarks for goods and services related to the meta-universe may not be sufficient to provide satisfactory protection. Businesses may need to constantly consider and monitor whether they need to extend their trademark protection to where their business may be in the virtual world (Compared to the physical world) In other jurisdictions that have gained development, And develop multi-jurisdictional protection and enforcement strategies. This includes seeking trademark protection in locations where the company's servers are located and in target markets where consumers are familiar with the company's brand and products.

NFT And the meta Universe trademark dispute

For many businesses, Having the ability to conduct business in a virtual world through technology seems like an exciting prospect. This could mean access to a wider customer base, It also avoids the potentially huge costs associated with setting up an organization in the physical world. however, The increase in accessibility is not without its problems——Just as it is easier to do business in the meta-universe through technology, It is also easier for infringers to use technology to infringe trademark rights in the virtual world.

The first complexity added is, In the virtual world, Anonymity is everywhere. Infringers can use technology to mask their true identity, And often use false information to prevent themselves from being tracked.

The Singapore court held that, Legal proceedings may be instituted against unidentified persons at the beginning of proceedings, And can give orders to them. however, The plaintiff needs to describe the unknown defendant with sufficient certainty, To identify which defendants are included, What is not included. it NFT In terms of, This can be done by mentioning the wallet that receives crypto assets, The pseudonym used by the defendant or NFT Per se (For each NFT They are all unique) To describe such defendants.

Claimants may also consider using a third party disclosure order (Norwich Pharmacal Order) , It's a court order against a third party, They are required to provide documents or information to assist in the identification of relevant wrongdoers. Such information can be directed to the account provider that provides access to the relevant meta-cosmic service, Be related to NFT The publisher or display is relevant NFT the NFT marketplace. In Singapore, Such an order may be sought before the claimant takes legal action to the court.

Unlike the English courts, The Singapore court has yet to rule on whether disclosure orders can be obtained against third parties outside Singapore. however, It is worth noting, The reasons for Singapore courts to allow service of court documents outside Singapore are quite broad.

In addition, It also takes time for business owners to seek extended protection through trademark registration. In view of NFT And the speed at which meta-cosmic technology is developing, Business owners will most likely have to rely on existing trademark registrations to pursue trademark infringers. So the question is, Whether the scope of the existing trademark registration is sufficient to allow the applicant to do so. Singapore has yet to issue any such ruling, However, the claimant has had successful practice in other jurisdictions.

A court in Rome recently issued a ruling, namely "Downloadable electronic publications" The existing registration is covered NFT Sale of. Juventus FC (Juventus Football Club SpA) v Blockeras (Blockeras Srl) The case involves Blockeras In production, Sales and online promotion NFT When used "JUVE" and "JUVENTUS" Both words and graphic trademarks (Black and white striped shirt with two stars on the chest) . Apart from relying on the existing trademark registration system, Juventus Football Club also managed to prove that it has been active in the use of cryptocurrencies or cryptocurrencies through agreements with other parties NFT In blockchain-related games. In this case, Roman court found Blockeras Violation of the trademark of Juventus Football Club.

And more recently in the United States at Hermes (Hermès International) V. Rothschild (Mason Rothschild) In the decision of the case, Defendant Rothschild made it 100 a MetaBirkin NFT. Unlike the original Hermes handbags, which are usually made of leather, The virtual handbags are depicted as having a leather surface.

case

Hermes is famous for its Birkin bags. The brand claims it owns "BIRKIN" trademark, BIRKIN Handbag design commercial look right as well as many "Not limited to 3D Design mark" Numerous trademark registrations.

At the time of Hermes' lawsuit against Rothschild, The Hermes trademark is limited to its physical goods. its "BIRKIN" Word trademark registration for leather or imitation leather products, Instant bag, Handbag, Travel Bag, Backpack, purse, Wallet nature card sleeve, Leather purse, Key holder, Brief case, Suitcases and suitcases, The commercial appearance has been registered for the handbag. So there's a problem, That is, whether the protection previously given to physical goods can be extended to virtual goods. The jury in the case did not explicitly discuss the issue, But holding Rothschild responsible.

Although businesses should be registered specifically with NFT Trademarks for goods and services related to the meta-universe, But if necessary, If-fact matrix (factual matrix) permit, The existing trademark registration system can be relied upon in Singapore trademark disputes. If the existing trademark registration system is robust in terms of designating goods for downloadable files or goods for online trading and marketplaces, You can consider using it. Such as, A business that operates brick-and-mortar cafes has been established under No 35 class (Covers online marketing and advertising) Registered trademark, It might be argued that its trademark protection extends to virtual cafes in the meta-universe (It can be said that it is equivalent to online marketing and advertising to some extent) .

In every practical situation there is a problem, That is, whether the defendant used the description trademark in the course of the transaction NFT. In Singapore, Applicants seeking to bring action against trademark infringers must prove that the infringer used the trademark in question in the course of the transaction (namely, As a means of distinguishing the source of the goods or services concerned) . Such use may not be used solely for decorative purposes or to describe the relevant products or services or certain elements thereof. In view of this, The legal definitions used in the trading process are very broad, Covers advertising and other uses of trademarks not directly applied to goods.

In addition, In Singapore, What a plaintiff in a trademark infringement action must prove is, Infringing the same trademark on similar goods or services (Or both) , Or infringing a similar trademark on the same goods or services (Or both) , Could lead to public confusion.

In the case of Hermes v. Rothschild, According to the evidence submitted by Hermes, Several fashion magazines (Such as "Elle" and "L'Officel" ) will MetaBirkins NFT Mistake for "Hermes is marching in NFT marketplace" , Social media users also expressed their confusion. Hermes also submitted evidence in the form of studies conducted by experts, To show the actual confusion.

Investigative evidence can be a useful and important tool that claimants can use to prove the likelihood of confusion. however, It's also important to note, Such investigations must be well designed and carefully conducted. In this regard, The Singapore High Court has provided a number of principles that claimants should be aware of:

－The respondents in the survey must be able to represent the relevant public segment;

－The size of the survey must be statistically significant;

－The investigation must be conducted fairly;

－All investigations conducted must be disclosed, Includes the number of surveys conducted, The manner of the investigation and the total number of persons involved;

－Full investigation responses must be disclosed and provided to the accused;

－The survey questions are neither instructive, Nor should the person answering the question lead into areas of speculation that would never have begun if the question had not been asked;

－Accurate answers should be recorded, Not some shorthand;

－Must the guidelines on how to conduct the survey be disclosed; and

－If the answers are coded so they can be entered into a computer, The coded instructions must be disclosed.

One more thing to keep in mind, In the right circumstances, Claimants may also avail themselves of Singapore "1998 Trademark act" The first 55 Article provides protection for well-known trademarks, This article provides:

Well-known marks are entitled to protection under this article——

1, Whether or not the mark has been registered in Singapore, Or whether an application for trademark registration has been filed with the Registrar; and

2, Regardless of whether the trademark owner carries on business or has any goodwill in Singapore;

3, According to # (6) and (7) The provisions of paragraph, The owner of a well-known trademark has the right to restrict other parties in Singapore by injunction, In the process of trading, Without the consent of the trademark owner, On any goods or services, Use a trademark that is identical or similar to the trademark of the trademark owner or a significant part thereof, And the use of trademarks——

(1) Indicate the connection between those goods or services and the owner of the mark, And may harm the interests of the trademark owner; or

(2) If the trademark owner's trademark is well known to the general public in Singapore——

(a) Would unfairly dilute the distinctiveness of the trademark owner; or

(b) Would unfairly take advantage of the uniqueness of the trademark owner.

Even if the claimant has not registered the trademark in Singapore (Let alone with NFT Or metaverse related goods or services) , This provision may also be invoked. The test adopted by the Singapore Court of Appeal in determining whether a mark indicates a connection between plaintiff and defendant contains an element of likelihood of confusion, And will produce the same results as the test standards applicable to counterfeit claims——namely, Whether the defendant made false statements that caused the relevant public to misidentify the source of the product or service, And whether the misrepresentation has caused or is likely to cause damage to the plaintiff's goodwill.

with NFT Law enforcement issues related to trademark disputes

One significant difference between traditional trademark disputes and blockchain-related disputes is, Crypto assets created using blockchain technology are permanently inscribed on the ledger. Unlike traditional remedies of destroying infringing goods, It is impossible to delete crypto assets.

The plaintiff can obtain an injunction (Stop infringement) Or delivery order (Delivery of the infringing goods to the plaintiff) Or an order to do both. however, In connection with NFT Related trademark disputes, Be related to NFT May no longer belong to the issuer. therefore, The defendant may face practical challenges in complying with the traditional injunction or delivery order obtained by the plaintiff.

In the case of Hermes v. Rothschild, By report, MetaBirkin NFT Sold at a record price. Demand delivery of the NFT To take it out of circulation, You need to know what to do NFT Identity of the holder. Unilateral forced transfers may also present technical difficulties, because NFT Holders will need to provide their private key to enable any transfer.

therefore, The plaintiff may consider other remedies, To ensure that defendants do not try to use these practical issues as an excuse. One option could be to seek an injunction against marketplace platforms, To prevent it from allowing further sales related NFT. A court in Singapore has previously granted an ownership injunction against one defendant, Stop the defendant "Deal with bored apes in any way NFT, Until the end of the legal proceedings" . Has been providing boring apes NFT Trading platform OpenSea Then freeze the NFT Sale of.

Another possibility is to ask the issuer to delete NFT Underlying assets of. On account of NFT It is often linked to the underlying digital asset (Usually images) , It may therefore be necessary to seek an injunction against the hosting of digital assets. This can be in stark contrast to situations where tools used to make infringing physical goods are delivered or destroyed, Because the latter will make the cost of the defendant to restart or continue the infringement greatly increased. (Be compiled from www. lexology. com)

TRANSLATORS: Wang Dan　proofread: Liu Peng



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