New Guidelines for virtual goods
As of July 14, 2022, KIPO has also revised its Examination Guidelines for Virtual Goods and updated the rules for determining the similarity of virtual goods.
• Acceptable descriptions
In the past, for example, ‘‘virtual clothing’’ could only be registered in the form of a “downloadable image file (virtual clothing)” or “recorded computer program for virtual clothing (virtual goods)” in Class 9.
Now, “virtual clothing” or “downloadable virtual clothing” in Class 9 can be registered directly, whereas “virtual goods” not designating specific goods will be rejected for being an unclear description.
• Similarity determination
- Virtual goods vs. Image files
Previously, virtual goods filed in the form of a downloadable image file for a specific item were determined as similar to the image files or computer programs regardless of the field of usage thereof. Virtual goods will now be presumed to be dissimilar to those of previously registered image files, even if the image files contain virtual goods.
- Virtual goods vs. Virtual goods
The similarity criteria between virtual goods resemble those of corresponding goods in the real world. For example, as in the real world, clothing and pants in the virtual world are similar goods, whereas virtual clothing and virtual automobiles are dissimilar goods.
- Virtual goods vs. Real goods
Since virtual goods reflect the name and appearance of real goods, they are arguably similar to real goods. Importantly, however, virtual goods will be presumed dissimilar to real goods. Accordingly, virtual clothing and real clothing are presumed to be dissimilar under these guidelines.
KIPO views that virtual goods are not likely to cause consumer confusion as to the source of goods with the corresponding actual goods, because the purpose of the goods, usage, customers, or distribution channels thereof are different.
As an exception, if a filed virtual trade mark is identical or similar to a famous trade mark, it will be examined whether such trade mark would cause any confusion with the famous trade mark.
- Services provided via virtual environment vs. Services provided offline
Services provided via a virtual environment such as the metaverse are regarded as similar to the services provided via the Internet or online. As in the previous guidelines, they are categorised by the “purpose” of services irrespective of whether they are provided via a virtual platform, online, or even offline.
Accordingly, unlike the similarity criteria between virtual goods and real goods (presumed to be dissimilar), retail service of a specific item in the metaverse is deemed to be similar to retail service of the same item online or offline. Likewise, performance of music in the metaverse is similar to performance of music in the real world.
The rise of the metaverse presents new opportunities for brand owners, regardless of whether the brand is new, weak, or famous, because it opens up a new space for them. Those owners of famous trade marks may enjoy some protection even without filing their marks for virtual goods; however, in order to protect their marks more strongly in the virtual world, it is highly recommended that they file trade marks for virtual goods as well as products in the real world.
Our thanks to Min SON, Ph.D., Patent Attorney for this article which was first published in the HANOL 2022/23 newsletter.