SPAIN Trends and Developments Contributed by: Marina Gómez, Arochi & Lindner
In order to address these challenges, both the SPTO and the EUIPO have updated their guide - lines. Applications for trade marks involving NFTs must now include specific details about the digital goods or services being protected. To illustrate, should a company wish to trade mark a digital artwork sold as an NFT, the appli - cation must describe it as “downloadable digi - tal artwork authenticated by NFTs”. A general description, such as “virtual goods”, is no long - er sufficient and must be replaced with a more detailed and accurate representation. Similarly, if the trade mark in question pertains to virtual clothing, it must be described in detail, such as “downloadable virtual clothing for use in online environments”. Implications for business The global trade mark system was not originally designed to accommodate the complexities of NFTs and virtual environments. To accom - modate these changes, the Nice Classification system, which organises goods and services for trade mark purposes, has been updated. The classification of NFTs and virtual goods has evolved, with the majority of digital content, including NFTs, now falling under Class 9, which covers software and digital media. However, if the NFT is linked to a particular product, such as a handbag or a bottle of wine, it may be clas - sified under different categories. For instance, handbags would fall under Class 18, while wine would be classified under Class 33. A Spanish winery may wish to consider using NFTs to authenticate limited-edition wine bot - tles. The winery would be required to describe its trade mark application as “alcoholic beverages authenticated by NFTs” under Class 33. Virtual goods, such as virtual clothing or digi - tal art, are treated differently from their physical
counterparts. While a physical shoe is classified under Class 25, its virtual version for use by an avatar in a video game is categorised under Class 9. Similarly, a fashion brand launching a collec - tion of virtual apparel for use in the metaverse must register its trade marks under Class 9 with descriptions like “downloadable virtual clothing, namely, virtual shoes and accessories”. The provision of virtual services, such as edu - cational seminars or concerts held in the metaverse, introduces an additional layer of complexity. Services are categorised according to their purpose. For example, an online financial consultancy provided in a virtual environment is classified under Class 36, in line with its real- world equivalent. However, virtual food and drink offered for entertainment purposes in an online setting are categorised under Class 41, reflect - ing their primary function as entertainment rather than sustenance. In contrast, real-world services related to the preparation and provision of food and beverages are classified under Class 43. In the case of a restaurant chain entering the Span - ish market that may wish to consider expanding into the metaverse to offer virtual dining experi - ences, it would therefore be advisable to regis - ter trade marks for both physical services under Class 43 and virtual offerings under Class 41, in order to safeguard its brand. It is crucial for businesses venturing into the NFT space to be aware of these rules, to avoid delays or rejections when registering their trade marks. The challenges presented by NFTs are not insurmountable, but they do require busi - nesses to adopt a forward-thinking approach. It is essential to review and update trade mark portfolios to include virtual goods and services and align strategies with the latest EUIPO and SPTO guidelines.
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