Burberry trademark in the metaverse: the EUIPO rejects the NFTs application for registration

The decision issued on 8th February 2023 by the EUIPO partially rejected the registration application of the figurative trademark reproducing Burberry’s well-known red and black checked pattern, submitted by the fashion Maison itself to distinguish goods and services in the metaverse.

Burberry and Metaverse 

In 2022 Burberry filed its own checked motive as figurative trademark, asking for the registration in classes 9, 35 and 41. Such classes had been selected in order to use the sign Burberry in the metaverse and, among others, in relation to NFTs, token based on blockchain technology and downloadable virtual products (included in class 9), sale services, also on-line, clothing items and virtual goods (included in class 35) and provision of virtual content and collection of digital goods relating to clothing and accessories to be used online and/or in virtual environments (included in class 41).

However, with respect to goods and services included in these three classes, EUIPO raised objections relating to the distinctive capacity of the iconic Burberry motive.

Distinctive capacity of a trademark

The Office starts by saying that every trademark has to be able to identify the goods as coming from a precise company and therefore to distinguish a good from the one of other companies. It also states that the perceptions conveyed to the consumer by the good found in the real world can be evaluated and applied also to virtual equivalent, as the key characteristic of the virtual goods is precisely reproducing the main features of the physical ones.

That being said, the EUIPO evaluated the distinctive capacity of the Burberry sign in light of the principles already affirmed by the European Court on three-dimensional trademarks in the Louis Vuitton case (which, in 2015, faced the rejection of the registration application of its trademark constituted by the well-known brown and beige motive).

After having examined the motive pictured by the Burberry trademark, the EUIPO stated this decorative pattern does not differ from other checked motives commonly present on the market and already used for some goods and services for which an objection was raised.

EUIPO’s decision

Considering the Burberry pattern lacking of distinctive character, the Office partially rejected the trademark registration application.

In particular, the registration was not granted for all the goods and services included in class 35.

For what concerns classes 9 and 41, the EUIPO excluded the registrability for NFTs and for the majority of the goods and services requested by Burberry, whilst it accepted the registration application limitedly to digital avatars and videogames (included in class 9) and the provision of digital services relating to entertainment and videogames (included in class 41).

In conclusion, if on one the hand the decision of the EUIPO denied a full protection to Burberry figurative trademark in light of the lacking of distinctive character, on the other hand it granted the registration of the sign limitedly to some digital goods and services, thus admitting that the sign has distinctive character in relation to them.

Ilaria Feriti