The Nice Classification Adds Language Related to NFTs, the Metaverse and Crypto Assets | Skadden, Arps, Slate, Meagher & Flom LLP

Over the previous few years, there was growing debate surrounding the suitable trademark classification for digital property. The most up-to-date version of the Nice Classification (the twelfth Version), which took impact on January 1, 2023, gives sure necessary clarifications to this rising space.1

The Nice Classification

The Nice Classification is an internationally-recognized system, established below the Nice Settlement, that’s used to categorise items and providers for the registration of logos and repair marks. Every of the 92 international locations that could be a occasion to the Nice Settlement is required to make use of the Nice Classification in reference to the registration of logos in its nation, thereby creating consistency as every trademark is required to be registered inside certainly one of a lot of specified lessons.

A Committee of Specialists, comprised of representatives from all international locations that make up the Nice Settlement, is accountable for updating the Nice Classification, and these updates are printed yearly within the type of new variations and each three years within the type of new editions.2 Annual variations replicate all modifications made by the committee for the reason that adoption of the prior model, such because the addition of latest items and providers to the record. New editions replicate all amendments adopted for the reason that prior annual model and different modifications such because the switch of products or providers from one class to a different.

New Additions to the Nice Classification

The twelfth Version addresses the classification of digital property by updating sure lessons with the relevant items and providers:

Class 9, which already governs “apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media” has been up to date to additionally embody “downloadable digital files authenticated by non-fungible tokens [NFTs].” Notably, the products lined are the digital recordsdata which might be linked to or recognized by the NFT. A registration pursuant to Class 9 would doubtlessly not prolong to bodily items or different utility features that may be authenticated by the NFT.

As well as, the classification for items beforehand described as “downloadable computer software for managing cryptocurrency transactions using blockchain technology” was amended to “downloadable computer software for managing crypto asset transactions using blockchain technology,” thereby clearly increasing this class to incorporate different blockchain-based digital property, akin to NFTs.

Class 41, which broadly governs the next providers: “education; providing of training; entertainment; sporting and cultural activities,” has been up to date to incorporate a particular reference to “providing online virtual guided tours,” which ostensibly covers sure metaverse actions.
Class 42, which broadly governs “quality control and authentication services,” and already included a reference to “cryptocurrency mining / cryptomining,” was amended to reference “mining of crypto assets / cryptomining.” As with the modification to Class 9, this too displays an acknowledgment of a broader class of digital property in addition to cryptocurrencies.

Key Takeaways

The twelfth Version of the Nice Classification presents practitioners welcome steerage on the classification of varied digital property. As Web3 continues to evolve, we count on to see additional updates to and steerage round trademark classifications for digital property and associated providers.

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1 The twelfth Version of the Nice Classification could be discovered on the World Intellectual Property Organization’s website.

2 Till January 1, 2023, new editions have been printed each 5 years.

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