Guidance for protecting NFTs as Trade Marks

Resolution of the World Congress and Executive Committee Cannes, France, 25 to 29 September 2022 

“Guidance for protecting NFTs as Trade Marks”  

FICPI, the International Federation of Intellectual Property Attorneys, broadly representative of the free profession throughout the world, assembled at its World Congress and Executive  Committee held in Cannes, France, 25 to 29 September 2022, passed the following resolution:

RECOGNISING that the market of non-fungible tokens (NFTs) has grown dramatically in the past couple of years and that NFTs are now key financial and legal tools;

NOTING that legal rights conveyed by NFTs can be uncertain;

OBSERVING  that  digital artwork authenticated by NFTs  are not always accepted as trade marks in various jurisdictions, whereas in some jurisdictions the rules of registrability are not clear;

FURTHER OBSERVING that the classification of NFTs and the virtual goods associated with them has caused issues;

FURTHER NOTING that Trade Mark Offices still have no clear approach to the comparison of virtual goods with real world goods during  examination,  opposition and cancellation 
proceedings;

ALSO OBSERVING that Trade Mark Offices have not provided guidance on the use of NFTs as trademarks,  the proof of use of NFTs in connection with opposition and cancellation 
proceedings (including cancellation for lack of use) and with relation to the registration of trademarks in jurisdictions where use or intent to use is required;

URGES Trade Mark Offices and legislators to:

(a) provide guidance on the registration of digital artwork authenticated by NFTs, particularly in respect of ownership and proof of use (where applicable); 

(b) provide  guidance on the classification of NFTs and / or the virtual goods associated with NFTs; and

(c) provide guidance on the comparison of virtual goods with real-world goods during examination, opposition and cancellation (including cancellation for lack of use) proceedings. 
 

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