Trade mark protection in virtual worlds/the metaverse – IP offices respond with new classes for registration of virtual goods/NFTs as trade marks and the EUIPO deals with “metaverse” marks

The new version of the Nice Classification, the 12th edition, carries new categories for registration of trade marks in relation to NFTs and is being used by several national trade mark offices including the EUIPO and IP Australia. Read more to discover the approach being taken there and in the UK to marks in the metaverse? Read more

Australian High Court smooths out wrinkle in trade mark law: Reputation not relevant to ‘deceptive similarity’ test of infringement

The High Court has clearly set out in Self Care v Allergan that the reputation of a trade mark is not relevant when assessing deceptive similarity in infringement proceedings.1 In a unanimous decision, overruling a three-judge bench of the Full Federal Court, the High Court held that Self Care did not infringe Allergan’s ‘BOTOX’ mark by its use … Read more

Real Estate Guide to IP – Updated for 2023

In conjunction with our Real Estate division, the Herbert Smith Freehills London IP group has published a guide to the intellectual property issues that can arise in relation to real estate. It can be the case that sites or buildings are purchased without necessarily considering fully whether the underlying intellectual property assets are being transferred and what future access or control the new owner may need, or the vendor wish to retain. Read more

Innovation-based collaboration agreements: key IP considerations – an HSF video podcast for Practical Law

Collaborations for innovation are often established relatively quickly in pursuit of a commercial advantage. In this video recorded for Practical Law, Jonathan Turnbull and Rachel Montagnon share advice on managing such arrangements to maximise the likelihood of a successful outcome for all parties and in particular establishing the ownership, management and use of the IP involved. Read more

NFT infringes trade mark rights – Italian Court grants preliminary injunction in Juventus case

The IP Division of the Court of Rome has issued a preliminary injunction to prohibit the minting and marketing of Non-Fungible-Tokens ("NFT") that, unauthorised, reproduced well-known trade marks owned by the Juventus football club. While various cases related to NFTs and intellectual property rights are pending before the US courts, this is the first time that a court in Europe has found an NFT to be infringing IP rights, setting a useful precedent for brand owners seeking to protect their trade marks in the new era of the metaverse. Read more

Red card or fair play? Ambush marketing back in the news as FIFA World Cup kicks off

Ambush marketing is a term generally used to refer to marketing strategies that involve capitalising on the exposure offered by another company’s event or status. Recent, well-publicised examples have arisen out of the Federation Internationale de Football Association (FIFA) World Cup, including BrewDog's "anti-sponsorship" campaign run in advance of the 2022 World Cup in Qatar. Read more