In Part 1 of the Metaverse Series, we discussed the feasibility of registering a trademark for use in the Metaverse.
In Part 2, we will discuss potential triggers of trademark infringement in the Metaverse.
What Constitutes Trademark Infringement?
Pursuant to Section 19 of the Trademarks Act, a trademark registrant has the exclusive right to use the trademark throughout Canada with respect to those goods or services. Therefore, section 19 protects a registered trademark from infringement and allows a registered trademark owner to bring an action against an infringing mark.
Generally, section 19 provides four main considerations for the infringement of a registered trademark:
goods and services.
The four considerations will be discussed below.
Metaverse Trademark Infringement
The Trademarks Act establishes that ‘use’ varies based on goods, services and by export. Each of these ‘uses’ are ways that a trademark could be infringed in the Metaverse.
For example, if someone was using Nike’s goods or services by providing ‘downloadable virtual goods, namely, computer programs featuring footwear’ or ‘retail store services featuring virtual goods’.
2. Throughout Canada
The consideration of ‘throughout Canada’ refers to the requirement that the goods or services must be offered in Canada.
The Metaverse, much like the traditional Internet, transcends borders adding a layer of complexity when determining if an infringement has occurred ‘throughout Canada’.
Under Canadian Trademark law, an infringing Metaverse mark must be identical to the registered trademark.
If an infringing Metaverse mark is different in any way, then trademark owners may have recourse via section 20 of the Trademarks Act. In the context of the Metaverse, use of a registered trademark will tend to depreciate the goodwill of the registered trademark’s brand.
4. Goods or Services
A trademark owner is given an exclusive right to use their registered trademark based on the goods and services applied for at the time of registration. This can create issues when individuals try to use a brand's trademark in the Metaverse.
For example, Nike brought an action against StockX, an online resale marketplace (which also sold “physical” goods). Nike claims that StockX created Non-fungible tokens or (NFTs) displaying Nike’s trademark.
However, it is important to note that brands may not have protection for use in the Metaverse simply because they already have protection for their physical goods or services.
In order to protect registered trademarks, it would be prudent to register a new trademark in order to ensure protection in the “virtual” context. This is why many well-known companies, including Nike, are filing new trademarks for the “virtual” Metaverse.
In part 3 of the Metaverse Series, we will discuss use of marks in the marketplace that are confusingly similar, and infringe upon, registered trademarks used in the Metaverse.
Consult with a Trademark Lawyer First
The preceding content is for informational purposes only and does not constitute legal or professional advice. To obtain such advice, please contact our offices directly.