APAA e-Newsletter (Issue No. 29, June 2022)

Trademark Registration in Virtual Space

Tanakrit Tangburanakij & Praewpan Hinchiranan, Baker McKenzie (Bangkok Office) (Thailand)

While virtual space is developing and expanding, it has created a new journey for users (consumers) and business operators mirroring the real world as users can exploit and experience life virtually. Due to its impact, many business operators are preparing to take advantage of market opportunities in virtual space, including the Metaverse.

To enter into the market in virtual space, trademark applications covering the classes and goods for virtual goods/services should be filed with the relevant local Trademark Offices as soon as possible. This is because trademark registration is on a ‘first to file’ basis in each country and the examination process is time-consuming. Business operators have to be aware of the timeline in each country when filing for protection of their trademarks. For instance, in Thailand, the process for trademark registration may generally take around 12 – 24 months, before a trademark is registered.

Since 2021 when the first trademark application was filed, there have been new applications, to register trademarks for use in virtual space, being submitted to the United States Patent and Trademark Office (USPTO). The said applications have been filed by business operators in various industries, including, sports, clothing, food and restaurants, cosmetics, retail, music, financial institution, and automobiles, all seeking to be recognized and to secure their rights in virtual space.

Based on the applications filed with the USPTO, the applications have been filed for, among others, downloadable virtual goods in class 9, retail store services featuring virtual goods/services in class 35, online non downloadable virtual goods and NFTs in class 42. Since the applications are being examined by the registrar, it is expected that the relevant classification and specifications of goods/services will be issued by the end of this year and standardized in various trademark offices, including the Thai Trademark Office.

In Thailand, the Thai Trademark Office welcomes trademark applications for virtual goods/services. However, since virtual goods/services are quite new, the Thai Trademark Office will need to consider the results of the examination and consideration of the USPTO and other trademark offices on classes and specification of goods/services, and other issues that may arise in relation to virtual space, before examining the submitted application. Thus, it remains to be seen how registration of trademarks in Thailand for virtual goods/services will develop with the current situation.