With the exponential growth of NFTs and Metaverse in Intellectual Property law, there has been an increase in the number of Trade Mark registrations covering NFTs and Metaverse-related activities around the world. In view of this, World Intellectual Property Organization (WIPO), vide its 12th edition of Nice Classification, has incorporated the following amendments in the description of goods/services:

• Class 9: “downloadable digital files authenticated by non-fungible tokens”;
• Class 41: “providing online virtual guided tours”; and
• Class 42: “mining of crypto assets / cryptomining”

Furthermore, it has been noted that the 13th edition of Nice Classification, which will enter into force on January 1, 2024, will further widen the scope of NFTs and virtual goods and services in classes 9, 35, 36, 41 and 42.

With this in effect and rising issues within Intellectual Property and Trade Marks concerning virtual space, it is important for Pakistan to consider the possible avenues to meet the virtual demands. The initial step is to register Trade Marks covering the elements of Metaverse and NFTs, which in fact has already been taken.

Recent Development in Pakistan and Bharucha’s Efforts

The Trade Marks Registry in Pakistan has shown acceptance of Trade Mark applications covering Metaverse and NFTs by allowing such Trade Marks to be published in the Trade Marks Journal. Our firm filed its first NFT/Metaverse Trade Mark application for our client ‘NANDO’S LIMITED in classes 9, 35 and 43 advertised in the Trade Marks Journal 870 published in the month of August 2023.

The class descriptions were finalized considering the type of goods and services Nando’s offers and plans to offer in the Metaverse virtual space. As such, in addition to class 9, which specifically mentions NFTs in Nice Classification; classes 35 and 43 were added which are then worded in a manner to cover not only the actual goods of description but are extended to cover online and virtual aspects of Metaverse for this particular case.

Considering the evolving scenario in the world of IP, our firm is engaging in research and discussions on the effect of NFTs and Metaverse in IP law under the leadership of Mr. Mohammad Fazil Bharucha.

On January 27, 2023, our firm held its first formal discussion on the said topic, presented by Advocate Hadia Atiq and Advocate Siham Ladhani, which revolved around an overview of NFTs and Metaverse. Since then, we are actively pursuing the possibilities on the effect of such Trade Mark applications; how they will possibly impact the future of commerce; brands and businesses; the first step for brand owners to consider constructing a virtual marketplace in order to secure their IP rights in metaverse; views of other jurisdictions regarding the subject and how they are tackling with the issue; classifications in which Trade Marks are being filed around the world and possible questions for Pakistan to consider.

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