How to classify virtual goods and NFTs in Benelux trademark applications – Commentary

Trademark applicants must choose to which (class) of goods and services the symbol applies within the Nice Classification, an international classification of 45 goods and services.

The publication of BOIP’s communications comes as BOIP increasingly receives trademark applications involving goods and services related to virtual goods and NFTs. BOIP also indicated that it regularly receives inquiries from applicants on how to classify virtual goods and his NFTs.

NFTs are unique digital identifiers that cannot be copied, replaced, or subdivided. It is recorded on the blockchain and used to prove authenticity and ownership. Ownership of NFTs is recorded on the blockchain and transferable by owner, allowing NFTs to be sold and traded. NFTs typically contain references (and certifications) to digital files such as photos, videos, and audio. However, although a digital item is authenticated, it is separate from the digital item.

BOIP has revealed that it will approach the classification of NFTs and virtual goods as follows:

• Virtual goods do not fall into the same class as their physical counterparts. Rather, it will always be classified as Class 9 along with other digital and/or downloadable goods. Therefore, “digital clothing” is classified in class 9 instead of class 25.
• The term “virtual goods” itself is not considered sufficiently clear and precise by the BOIP. We need more specs about the content that those products relate to. For example, “downloadable virtual goods, i.e. virtual clothing.”
• The same applies to NFTs. The term “NFT” itself is not accepted according to BOIP and must be accompanied by an explanation.

Services related to virtual goods and NFTs are classified according to established principles for the classification of goods and services. BOIP practice is consistent with that of the European Union Intellectual Property Office in this regard.

BOIP provides the following examples of acceptable terms related to virtual goods and NFTs:

virtual goods
In class 9:

Software for visualizing virtual goods, i.e. .

Avatars for use in digital downloads, i.e. video games.

Class 35:

and other virtual goods retail services. . .

In class 41:

Entertainment with virtual goods.

entertainment by suggesting virtual games that may also be provided with services such as; . .

Class 42:

IT service for building an online virtual environment.

NFTs
In class 9:

Digital Ownership Certificate (NFT).

A non-downloadable digital ownership certificate in NFT format.

A non-fungible token (NFT), which is a digital certificate of ownership representing a virtual commodity.

Class 35:

Retail service for NFT issued virtual goods.

Class 36:

An exchange service for non-fungible value tokens (NFTs).

In class 41:

Entertainment with NFT-issued virtual goods.

Communication via BOIP is a welcome clarification. It was particularly uncertain whether applications claiming only “virtual goods” would suffice on their own, or whether they should be further specified. The latter is now confirmed as best practice.

Now that the first trademark applications related to virtual goods and NFTs have been granted, it will be interesting to see how trademark offices and judicial authorities treat such trademarks in the light of non-use revocation proceedings. . What volume of virtual goods use and/or sale is sufficient and how can we determine if, for example, a sale made in the Metaverse was also made in the Benelux territory?

Undoubtedly, there will continue to be interesting legal issues regarding trademarks related to virtual goods and NFTs.