Brands In A Digital World

On 15 May 2023, Professor David Tan, Co-Director of TRAIL, joined an illustrious panel of practitioners to discuss how the metaverse hype has affected the development of trademark laws, including registration, infringement and dilution. Organised by Baker McKenzie on the fringes of the 2023 International Trademark Association (INTA) Meeting in Singapore, this half-day client seminar titled “Brands in a Digital World” at Marina Bay Financial Centre Tower 1 brought together their lawyers and clients from around the globe.

David explained that while the metaverse as an immersive virtual environment is a much debated concept with myriad definitions, what is generally agreed is that the line between the social realities about how individuals live on a daily basis and the constructed online worlds in which people choose to invest their time, money, emotion and creativity will blur as the metaverse becomes more prominent and pervasive in the future. The reality in 2023 is that many companies that have ventured into the fray are now suffering losses and reevaluating their investments. Nonetheless, commercial opportunities abound, and many well-known brands have filed trademark registrations for myriad forays into the metaverse, as well as for non-fungible tokens (NFTs). In reality, the metaverse as presently understood is not an interconnected seamless world; it is in fact disparate virtual environments of games and networking spaces built on different proprietary platforms and blockchain technologies that are not interoperable.

On 1 January 2023, the 12th edition of the Nice Classification entered into force and it had been updated to more explicitly refer to uses in what we would call the metaverse, as well as NFTs. The appropriate classes are Class 9, 35, 41 and 42. Although there exists much ambiguity as to cohesive and viable business strategies regarding the metaverse and NFTs, big brands in the fashion, food, entertainment, automobile and real estate sectors are definitely registering their trademarks in these classes and commencing a spectrum of XR activities and issuing of NFTs. David concludes that as activities in the metaverse attempt to mimic reality – whether shopping, socialising or playing games – the way the law protects our expressive uses of trademarks in the real world will continue to adapt to confer similar protection in this virtual environment. However, the divergent perspectives between the US – with the juggernaut of the First Amendment – and the rest of the world regarding the emphasis to be placed on the status of freedom of expression in intellectual property jurisprudence will no doubt be a formidable challenge to the architects and users of the metaverse who are still trying to make sense of this frenetic new space.

Professor David Tan discussing trends in the metaverse that impact trademark laws

From left: Mr Steve Holmes, Professor David Tan, Mr Brian Hengesbaugh and Mr Kensaku Takase

From left: Mr Ken Chia, Mr Mark Lim (Director (Hearings & Mediation Group), IPOS; Adjunct Professor, NUS Law), Ms Eva-Maria Strobel