IP Quick Tip: Trademarks for the Metaverse 101

12/07/22 • 2 min

Get informed about our trademark-related services: bardehle.com

The good news is that there is not yet a trademark office in the Metaverse. This also means that you should be suspicious should you receive any emails or letters from a Metaverse trademark office asking for payments.

Trademarks for the Metaverse have to be filed with the usual suspects: the physical trademark offices all around the world. Based on what the EUIPO has published so far, here is what you should know when drafting the list of goods and services of your EU trademark applications for the Metaverse:

Given that the Metaverse is a virtual world, the goods there are also virtual goods. These virtual goods are images, so they are digital content. With this knowledge in mind, it should also become clearer how to classify individual goods.

Firstly, the goods belong to Nice Class 9.

Secondly, keep in mind that the term “virtual goods” is considered not to be sufficiently clear. So you have to specify it further by stating the content to which the virtual goods relate.

Here’s an example: If you want to file a trademark application for virtual shirts, you could file a trademark application in class 9 for “downloadable virtual goods, namely, virtual shirts”.

In contrast, the classification of services relating to virtual goods remains unchanged. Thus, retail services in the Metaverse, for example, still belong to Nice Class 35, with retail services still having to be specified.

Get informed about our trademark-related services: bardehle.com

Firstly, the goods belong to Nice Class 9.

Secondly, keep in mind that the term “virtual goods” is considered not to be sufficiently clear. So you have to specify it further by stating the content to which the virtual goods relate.

Here’s an example: If you want to file a trademark application for virtual shirts, you could file a trademark application in class 9 for “downloadable virtual goods, namely, virtual shirts”.

Previous Episode

IP Quick Tip: Double patenting in Europe

For a deep dive into the Unitary Patent and Unified Patent Court, please visit: https://www.bardehle.com/en/upc-special

Most European jurisdictions, including Germany, have prohibited double patenting for a long time. This means granting one applicant two patents with identical claims. Also, the EPO’s Enlarged Board of Appeal held in its decision G 4/19 that an applicant has no legitimate interest in obtaining two European patents for identical subject-matter.

However, this does not mean that an applicant cannot be granted two patents for one invention in Europe. Also, with the upcoming UPC, it is time to revisit strategies on double patenting:

Firstly, the EPO’s ban on double patenting only applies to applications that have identical claims.

There is no obstacle that prevents an applicant from seeking two claim sets for one invention. A typical example might be obtaining a first patent with narrow claims, and then following up with a divisional application with broader claims.

There are good reasons to pursue both claim sets and to maintain both patents. If a narrow patent still covers a product that is difficult or impossible to re-design, such as a patent that reads on a standard, this patent might be a highly valuable asset, since it will be very difficult for third parties to attack its validity. At the same time, the broad patent has value, since it might cover more products or future implementations.

Secondly, with the UPC on the near horizon, the law in the national jurisdictions on double patenting may change.

For example, in Germany, an applicant will be allowed to have a European patent – be it a bundle patent or a unitary patent – and a German national patent with identical claims if the European patent has not been opted out.

This is well spent money because later, when it comes to enforcement, you will have the choice: Enforcement of the European patent is subject to the jurisdiction of the UPC, while the German patent is enforced before national courts.

Thus, if you would like to add flexibility to your portfolio of European patents, think about this approach for selected cases.

Next Episode

EPO opposition and UPC revocation proceedings

For a deeper dive into the Unified Patent Court and the Unitary Patent, please visit our dedicated UPC website.

With the official start of next spring on the first of March 2023, the sun will rise at last over the frozen landscapes of the UPC member states. The UPC agreement itself will subsequently come into force on the first of June 2023.

With it, there will be significant changes to the way that the validity of a European patent can be challenged, which will be the topic of this podcast.

My name is Johannes Möller.

And I’m Marius Fischer. We are both patent attorneys at BARDEHLE PAGENBERG.

Marius, which options do I currently have to challenge the validity of a European patent?

At the moment there are two options: You can either file an opposition at the European patent office during a non-extendable period of nine months after grant, or you can file a national nullity complaint after expiry of that period if there are no opposition proceedings pending.

What are the main differences between opposition proceedings and national nullity proceedings?

The main differences lie in territorial scope and cost. Opposition proceedings before the EPO affect the patent in all EPC member states, whereas nullity proceedings of course only concern the respective national part of the patent. In opposition proceedings, each party generally bears its own costs. That means the opponent still has to bear their own costs even if the patent is fully revoked. Likewise, the patentee has to bear their own costs even if the patent is maintained as granted. However, the official fee is remarkably low, currently 840 euros. In contrast, in German nullity proceedings, the prevailing party has a claim for cost reimbursement against the losing party. Even the court fees ultimately have to be borne by the losing party. They are determined based on the value in dispute, and this can add up: For example, for a typical value in dispute of 1,25 million euros, the court fees amount to about 31 thousand euros.

An additional important aspect in the current system is bifurcation.

In the current system, the regional courts are competent for questions of infringement, whereas the Federal Patent Court or the EPO has exclusive competence to decide on validity. Johannes, is there still bifurcation under the UPC agreement?

That depends. Before the UPC, it is possible to file a counterclaim for revocation during infringement proceedings, which will be handled in one of three ways: The first option is that the local or regional chamber that is competent for the infringement case also rules on validity. The second option is that the local or regional chamber refers the revocation action to the central chamber. It can still decide on infringement or stay the proceedings. The third option is that the entire case is referred to the central chamber.

So at the UPC, the competent local or regional chamber decides whether or not there is bifurcation?

Exactly. And what happens if there is no infringement case but if I think that a European patent may be invalid and could potentially pose a risk to me. Can I still challenge its validity before the UPC?

Yes, it is possible to file a claim for revocation before the central chamber even if there are no infringement proceedings pending. And one thing to bear in mind here, that frequently leads to some confusion, is that this applies not only to unitary European patents issued after the start of the UPC but also to traditional European bundle patents, even those that have already been granted, so long as they have not been opted out of the competence of the UPC.

Another difference to the current system is that it is possible to file a revocation action or a counterclaim for revocation before the UPC even if the opposition period has not expired or if opposition proceedings are currently pending.

What about costs? How much does a claim or counterclaim for revocation cost and would I be entitled to cost reimbursement if I won?

The UPC charges a fixed fee of 20 thousand euros in court fees for revocation actions. This is higher than the EPO’s opposition fee but lower than the court fees of the German Federal Patent Court in most nullity cases. Plus, the prevailing party is entitled to cost reimbursement from the losing party.

Marius, what about the duration of the proceedings?

UPC revocation proceedings are intended to be completed at first instance within about one year. Thus, UPC revocation proceedings are about as fast as opposition proceedings under accelerated processing but faster than regular opposition proceedings, which can take 1,5 to 2 years, and much faster than German nullity proceedings which can take 2,5 years from the filing of the complaint until a decision is available.

Johannes maybe you...