Executive Summary
Recently, as businesses related to the virtual world have become more active and transactions for digital goods have increased in the metaverse, demand has increased for reorganizing the classification of classes of goods, services, and standards related to the for virtual world. While the number of trademark applications covering the designated goods of virtual products was only 20 before 2019, in 2022, the number has reached a total of 760. Accordingly, in May 2022, the KIPO prepared “Virtual Goods Examination Guidelines,” stipulating the scope of specific names of designated goods, and guidelines for determination on similarity to enhance applicants’ convenience and consistency during examination.
The guidelines describe that when an application is filed with respect to “virtual goods + software/program” with the name of goods such as “a downloadable computer game program containing virtual clothing for virtual environment,” the goods are classified with the same classification of goods as and similarity group code to “application software” in Class 9 of classification of goods.
However, “downloadable, i.e., online virtual goods, and computer programs for online virtual worlds or “virtual goods” is unclear, and the description of the specification of the goods should be specifically amended to “a computer program containing downloadable online virtual goods, i.e., shoes/clothes/hats/glasses/bags/sports bags/backpacks/sports equipment/works of art/toys/accessories for online virtual worlds,” “downloadable virtual clothing,” etc.
In addition, service names consisting of “a virtual product + the conventional name of designated services” such as “sales agency services for furniture using a metaverse,” “advertising agency services in virtual worlds,” “presentation of musical performances using virtual environment,” etc. are the same as the conventional manner and purpose of providing services, differing only in using the virtual environment as a medium. Accordingly, the classes of goods and similarity group codes of the designated goods are classified according to the standard for the conventional names contained therein, “sales agency services for furniture,” “advertising agency services,” and “presentation of musical performances”.
Furthermore, it was stated that when specific real goods become virtualized goods, the name of goods should be designated, i.e., “virtual clothing,” “virtual hats,” “downloadable virtual clothing,” “virtual clothing for a metaverse,” “downloadable virtual clothing online retail business” and “retail store services featuring virtual goods, namely, clothing and footwear for use in online virtual worlds,” and the names of the goods are classified as the same class of goods and similarity group code to “downloadable image files” in Class 9 of goods of the conventional specification of the designated goods. Also, similarity between goods should be determined based on this principle. For example, “virtual shoes” in Class 9 of the classification of goods and “virtual clothing” in Class 9 fall within the same similarity group code, as they are similar goods. However, “virtual bags” in Class 9 of the classification of goods and “shoes” in Class 9 of the classification of goods are not consistent with each other in terms of conditions of transactions, and thus seem to be non-similar. In the case of a well-known trademark, when misconception and confusion as to the source are likely between virtual goods and real goods, the virtual goods may be rejected on those grounds.
While KIPO has announced these examination guidelines, they are provided for convenience of examination, and in the future, if there are related trial decisions or precedents in various cases, the details of the examination guidelines are expected to be modified.