• NFTs are treated as “unique digital certificates registered in a blockchain, which authenticate digital items but are distinct from those digital items”.
• The term “downloadable digital files authenticated by non-fungible tokens” will be included in the 12th edition of the Nice Classification.
• The term “non-fungible tokens” alone will not be accepted. The type of digital item being authenticated needs to be specified.
• The term “virtual goods” alone will not be accepted as it lacks clarity and precision. The content of the virtual goods must be specified. For example, “virtual goods, namely, virtual clothing” would be accepted. The term would be proper to class 9, as the goods are treated as digital content or images.
• Services relating to these goods will be classified according to the usual principles for classifying services.
• The EUIPO’s approach is outlined in the 2023 draft Guidelines, on which stakeholders may comment until 03 October 2022.

We have seen similar objections raised against terms such as “digital collectibles”, where the content must be specified to enable clarity and precision.

At the UKIPO, the term “non-fungible tokens used with blockchain technology” was considered too vague in a recent case. Instead, the UKIPO confirmed it would accept “downloadable software, namely non-fungible tokens used with blockchain technology” in class 9.

In the UK in July 2022, the Law Commission published a consultation paper setting out its recommendations for changes to the law surrounding digital assets, including NFTs. At the time of writing, the deadline for comment is 04 November 2022.

It will be interesting to see how physical assets and/or memberships linked to NFTs will be treated by the IP offices in due course. As the law moves to recognise and protect digital assets, the terminology used to specify related terms will no doubt evolve.

Useful links

EUIPO news: dycip.com/nice-virtual-nft

Law Commission consultation: dycip.com/lawcom-digitalassets