Tomorrow is the start of Metaverse Fashion Week (MVFW), at which
Dolce & Gabbana, Paco Rabanne, Elie Saab, Tommy Hilfiger and
Cavalli will showcase their collections virtually. MVFW'22 is
an immersive shopping experience where buying virtual clothing in
the 3D virtual-world platform "Decentraland" also sees a
physical twin shipped for your real wardrobe. Here are some
considerations for fashion brands before their Metaverse
debut:
1. Consider the territorial scope of your current trade
mark protection
The Metaverse can be joined by anyone in the world that has access
to the internet. A trade mark registration is a property right and
its scope is determined by the country/territory in which it is
registered. Selling physical products via the Metaverse to a
customer in a territory where a brand has no existing trade mark
protection, or where no due diligence has taken place (i.e. a
clearance 'search' to determine whether third parties have
any earlier rights), could leave brands exposed to infringement
proceedings. Well-known fashion brands selling physical and virtual
products via Decentraland this week may be able to rely on their
reputation in a trade mark infringement dispute. However, smaller
fashion brands may struggle to do the same. It may be necessary for
fashion brands to put controls in place to halt the sale of
physical and/or virtual items via the Metaverse where the location
from which the product is being purchased is a new market and is a
territory in which no assessment has yet been undertaken of the
risks involved in use of the brand.
2. Consider whether your brand needs to expand its existing
trade mark protection to other goods and/or services
Pending or registered trade marks cover categories (or
"classes") of goods and services. Whilst the sale of
physical fashion items via the Metaverse may be protected
by "clothing; headgear; footwear" in
class 25, if a fashion brand is intending to sell virtual goods via
the Metaverse, there is a question mark over whether the virtual
version would be covered by class 25 or whether it may fall under a
different class of goods. Fashion brands may therefore wish to
consider extending their current trade mark protection to cover
virtual goods and services – by way of example, on 8 March
2022 Red Bull GmbH applied for a US trade mark application for the
sign 'RED BULL' and its 'fighting bull logo' to
cover 'downloadable virtual goods , namely computer
programmes featuring clothing, footwear, headwear' in
class 9 plus 'retail store services featuring virtual
goods, namely, clothing, footwear, headwear' in class
35.
3. Conduct a clearance search before use in the Metaverse
Since it is uncertain whether providing virtual fashion items
via the Metaverse constitutes diversifying the product range of an
existing brand, it is important to carry out "top-up"
searches to ensure that there are no legal issues in using the
brand in relation to the virtual goods. Given that trade marks are
territorial, it may be necessary for fashion brands to seek local
advice on whether to search in each territory in which the virtual
fashion items will be sold. If there are plans to sell physical
fashion goods to new markets via the Metaverse, searching in class
25 ("clothing; headgear; footwear" ) may
also be necessary (subject to local advice). In addition, it may be
necessary to file a new application to ensure you have registered
trade mark protection for the new product range.
4. Consider whether your brand has any coexistence
agreements in place which may impact their entry into the
Metaverse
An agreement between two or more companies agreeing to limit their
use of the same or a similar trade mark in certain territories in
order to coexist may prevent the respective parties selling to
certain consumers in the Metaverse. The uncertainty surrounding
whether virtual goods would be classified in class 9, class 25 or
any other class, may also impact agreements where the parties have
agreed to limit their use of the same or a similar trade mark to
specific classes/goods/services. Fashion brands should therefore
consider seeking local advice to determine whether the planned use
may constitute breach of contract.
Marks & Clerk act on behalf of a wide range of clients operating in the fashion industry and are well placed to advise further on any of the above issues.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.