KIPO’s New Examination Guidelines for Protection of Virtual Goods
Jiyeong Yi, Firstlaw P.C. (Korea)
With the sharp increase of trademark applications relating to metaverse and NFTs in recent years, the KIPO issued new guidelines setting out the boundaries of acceptable descriptions of virtual goods/services and how the similarity of goods/services involving the virtual world is to be determined. The new guidelines have been in effect since July 14, 2022.
Acceptable Description of Virtual Goods/Services
Trademark applications for virtual goods have so far been filed in Class 9, mostly in the exemplary form of “downloadable images files (virtual clothing)” or “computer programs recorded with virtual clothing”; whereas trademark applications with descriptions of real world goods simply preceded by the adjective “virtual,” such as “virtual clothing,” have been considered unacceptable.
With the introduction of the new guidelines, the KIPO now accepts descriptions that combine the word “virtual” directly with the names of real world goods per se, provided that the names of the goods are sufficiently specific under the existing guidelines. Therefore, such descriptions as “virtual goods” or “virtual vehicles” will still be rejected for being overly comprehensive and vague, whereas “virtual clothing” will be accepted because “clothing” is an acceptable description of goods in current practice.
The same principle will apply to service mark applications for retail store services for virtual goods in Class 35. Therefore, the names of virtual goods that are the objects of retail store services need to be sufficiently specific, such as “retail store services for virtual clothing,” and broad descriptions such as “retail store services for virtual goods” will not be acceptable.
Similarity Analysis of Trademarks Involving Virtual Goods/Services
In order to define the scope of similar goods/services in a consistent manner, which is critical in the similarity analysis between conflicting trademarks, the KIPO has been using Similarity Group Codes (“SGC”). SGCs are basically seven-digit alphanumeric codes assignable to each and every goods/services; and goods/services with a same SGC are regarded as similar to each other.
The KIPO has introduced a set of new SGCs to be assigned solely for virtual goods. The new SGCs are still in Class 9, but they are separate from the SGCs of image files or computer programs that have so far been used to describe various virtual goods. To the extent that the actual goods are viewed to be different from each other, their virtual counterparts will also be considered dissimilar. In principle, the scope of the similarity of virtual goods does not extend to their actual counterparts and vice versa; although there may likely be exceptions in case famous or well-known trademarks are involved.