A trademark is the possibility for a commercial entity to differentiate its products from others of the same category, using elements such as drawings, vectors, colors, letters, numbers, words, phrases, etc. According to the World Intellectual Property Organization (WIPO), these elements are divided into figurative (images), sonorous, textual and even tactile.
Characteristics of a trademark.
Every trademark must comply with two essential characteristics: it must have distinctive character and must not be misleading.
As regards distinctiveness, the mark must seek to distinguish a product, not to describe it. For example, if a trademark for caps is named “caps”, such name is not distinctive but rather descriptive, which if registered will limit its competitors to describe your product since they will not be able to use that word under any circumstances.
Not to be misleading refers to the fact that trademarks must not make allusion to standards or qualities that do not comply, for example, that it states that it is made of a resistant material that is more valuable for the market, when in fact it is made of a cheaper and less resistant material.
The medium where borders are blurred.
According to International Law, the registration of trademarks has territorial protection, that is, unless it is a widely known trademark, it only receives legal protection in the territory where the office where it was registered is located, if a trademark is registered in Spain, claims will only proceed before the Spanish jurisdiction on uses of the trademark in Spanish territory.
This leaves us with two questions, is there no such thing as an international trademark registration, how do you protect a trademark on the internet and now in the metaverse?
There is no such thing as an international trademark registry, however, there is an international agreement signed by 119 countries that is administered by the World Intellectual Property Organization, called the Madrid Agreement, through which an application can be made that will inform the local trademark offices that interest the applicant, subsequently these offices will give an affirmative or negative response as the case may be.
Trademarks on the Internet present disadvantages because the scope of the virtual world transcends physical borders and it may happen that in two different territories a trademark is used by two different persons to identify products or services of the same type according to the Nice classification. Search engines will give priority to those that have a better positioning strategy or that reserve paid advertising, at the same time there is another situation that may or may not solve the problem, which are the domains.
A domain is an asset that configures an IP address into names that are easy to search and remember, so that it can provide an identity to a brand.
Widely known trademarks and not known trademarks.
In this sense, trademarks may receive protection against uses within the State in which it was registered against persons who are using that trademark or similar distinctive signs, given the jurisdictional difficulties, this joint recommendation arises from the General Assembly of the Paris Union for Industrial Property and the General Assembly of the World Intellectual Property Organization.
The case is different when dealing with a well-known trademark, which receive a different treatment according to the Paris Convention in which their claims may have scope in several jurisdictions without the need to have a registration in the local office of the State where the right is affected.
Trademarks in the metaverse.
Having already discussed trademarks on the Internet, the assumptions can be applied by analogy to trademarks in the metaverse, a digital space where many companies have ventured exploring new environments.
New companies whose main purpose is to establish themselves in this environment have the option of making a projection of how many countries they want to support and register their trademark under the Madrid Agreement by filing a request with one of the WIPO offices to be informed and be given an answer in the corresponding time in each local office.
If you are a well established company you have two options if your trademark is widely known you can benefit from the protection that these trademarks receive or avail yourself of the protections where they were previously registered.
Conclusions.
These recommendations to operate in the digital world, from my point of view, are not the most effective because they can still affect the rights of traders, however, they are the most realistic solutions according to the tools and scopes that allow the current legal rules. I consider that domain names may or may not represent a solution because a trademark may be in use long before a domain name was created by another person, which would not be in accordance with reality but who registers it first is the owner.
