Lee International

The Korean Intellectual Property Office (KIPO) has issued new trademark examination guidelines for trademark applications covering virtual goods (“Guidelines”), effective as of July 14, 2022, to cope with the recent growth of the metaverse market.

The main points covered by the Guidelines are as follows.

1. Specification of goods in the form of virtual + real goods such as “virtual shoes” and “virtual clothing” are acceptable, whereas general specifications such as “virtual goods” are not acceptable; 

2. Goods in the form of virtual + real goods belong to Class 9, but are considered dissimilar to the goods “downloadable image files, computer programs for game” in Class 9; and 

3. Virtual goods are considered dissimilar to their corresponding physical goods (for example, “virtual shoes” are considered dissimilar to “shoes”).

In relation to the Guidelines, an official from the KIPO stated that since virtual and physical goods are considered dissimilar in terms of their specific purpose of use and trade channels, they are unlikely to be confused in the market, and thus virtual goods will be considered, in principle, dissimilar to their corresponding physical goods.  However, if an application covering virtual goods is filed for a mark that is similar to a well-known/famous mark, the similarity between the physical and virtual goods would be examined more carefully, and thus the virtual goods and physical goods could be deemed similar. 

In Korea, Samsung Construction and Technology Corporation (“Samsung C&T”), which is a leading Korean construction company, filed trademark applications covering virtual goods for the first time in the construction industry.  It appears that Samsung C&T filed those applications covering virtual goods to protect its trademark rights against trademark infringement issues arising in the virtual world.  In this connection, a member of Samsung C&T’s construction division stated that as trademarks are now widely used in the metaverse, Samsung C&T filed trademark applications covering virtual goods as a defensive measure to protect its trademark rights in this new era. 

In addition, Hyundai Motor Company (“Hyundai Motor”) filed trademark applications for its logos “현대 (HYUNDAI)” and “H” symbol, and the combination thereof covering virtual goods.  In this connection, a member of Hyundai Motor stated that Hyundai Motor filed such trademark applications in order to prevent its logo from being imitated in bad faith in the virtual world and that Hyundai Motor is considering expanding its business to the metaverse.  

According to an examiner in the trademark and design examination division at KIPO, many major domestic and foreign companies have increased filings for trademark applications covering virtual goods in an attempt to protect their trademark rights in the metaverse. 

In view of the above, even if a company is not currently contemplating expanding its business to the metaverse, it is recommendable to file a trademark application covering virtual goods in Class 9 as a defensive measure to prevent its mark from being registered or used by a third party in the metaverse.