Well-versed with Metaverse? An IP Perspective
The Metaverse is one which has taken the world by storm in these last few months. It has been noted that various brands have made a proactive entry into the metaverse sphere by way of filing trade mark applications in various jurisdictions including the US and EU.
A slice of the porky pie– TM and counterfeit in the food industry
There is a high risk of food adulteration in cases of counterfeited food/beverages as in most cases, the ingredients that go into the product are either unclear or misinterpreted. This is because the objective of introducing counterfeited products into the marketplace is to deceive consumers by adopting similar/identical packaging.
Proposal for Appointment of Prof. Unnat P. Pandit to the post of CGPDTM
The Appointments Committee of Cabinet has approved the proposal for appointment of Prof. Unnat P. Pandit, Professor of IP Innovation, and Entrepreneurship and Chairperson, IPM Cell, JNU to the post of CGPDTM, Mumbai.
Change in Amounts of Individual Fee while designating Singapore
Government of Singapore has notified the WIPO a declaration modifying the amounts of the individual fee payable in Swiss francs with respect to Singapore under Madrid Protocol.
Well-versed with Metaverse? An IP Perspective
By Vikrant Rana, Ananyaa Banerjee and Pranit Biswas
Technology is evolving every second and change is the only constant. In a competition-driven and tech-powered ecosystem, it is imperative to be aware of where the future is headed and get the first-mover advantage. While this can be a space with multiple obstacles, it may very well be the next breakthrough.
One such development where big businesses seem to be foraying is the metaverse. Simply put, it is “a virtual-reality space in which users can interact with a computer-generated environment and other users”. However, not that simple a concept from the legal standpoint, with the lack of any laws and regulations in this space with respect to data security, privacy and censorship, regulatory enforcement, tax reporting, cyber fraud and crime. Hence, it becomes even more imperative to understand this work in progress.
What is a Metaverse?
Metaverse is a combination of the words ‘meta’ and ‘universe’ and is practically the creation of a parallel virtual universe with digital avatars where one may be living their regular life, an alter ego. It will expand the scope of internet to bring together digital spaces like social media, online gaming, 3D spaces, decentralized commerce, virtual / augmented / mixed / extended reality, non-fungible tokens, cryptocurrency, immersive learning and the like.
This would allow one to be sitting in the comfort of their homes and dining atop the Eiffel Tower, enabling people from different parts of the world collectively have an experience at their convenience across time zones. Another scenario could be a skiing trip to the Swiss Alps without actually travelling to the location, sans the risk of physical injury, pandemic travel restrictions and risks, and most importantly a budget that blows a hole in the pocket. While such experiences may affect tourism adversely, they may aid in preservation of the environment, and there is no saying how the metaverse will change the way we perceive the world we live in.
One of the areas which is relatively new to this concept is the Intellectual Property laws, more specifically trade marks and brand names.
Off late, one has come across various brands that have made a proactive entry into the metaverse sphere by way of filing trade mark applications in various jurisdictions including the US and EU.
A few examples with filing details are as follows:
|Entity||Trade Mark||Class and Specification||Country||Date|
|NYSE Group, Inc.||NYSE||09 : downloadable virtual reality, augmented reality, and mixed reality software; downloadable software for enabling users to experience virtual reality and augmented reality visualization, manipulation, and immersion; downloadable computer software and application programming interface (API) to allow users to perform e-commerce and financial transactions; downloadable computer software and application programming interface (API) to allow users to make payments, transfer funds, and processing payments; downloadable computer software and application programming interface (API) to allow users to buy, sell, and trade financial instruments; downloadable software for digital, virtual, and crypto currency wallets and storage; downloadable computer software and application programming interface (API) to allow users to access, maintain, store, display, buy, sell, and trade virtual and digital assets, artwork, collectibles, and non-fungible tokens; downloadable software and application programming interface (API) for sending, receiving, accepting, buying, selling, storing, transmitting, trading and exchanging digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; downloadable software for use in financial trading; downloadable software for use in financial exchange; downloadable virtual goods, namely, non-fungible tokens; blockchain-based non-fungible tokens (NFTs) and NFT collectible series; digital media, namely, digital collectibles, digital tokens, non-fungible tokens (NFTs), cryptocurrencies, and digital art; digital media, namely, digital property granting the owner thereof exclusive ownership over said property but not necessarily any digital or analog copies of the same featuring information, content, or other forms of expression that can be digitized to provide the owner of said digital property with a unique certificate of authenticity and ownership; downloadable digital media, namely, digital collectibles created with blockchain-based software technology and smart contracts; digital currency wallet and storage services software
35 : financial exchange of virtual currency in the field of digital currency, virtual currency, cryptocurrency, digital tokens, crypto tokens, utility tokens, and non-fungible tokens (NFTs); financial transaction services involving digital currency, virtual currency, cryptocurrency, digital tokens, crypto tokens and utility tokens; financial services, namely, providing a digital currency and a digital token of value for use by members on an online community via a global computer network; financial services, namely, providing electronic transfer of a digital currency for use by members of an online community via a global computer network; issuance of digital tokens; issuance of non-fungible tokens of value used with blockchain technology; cryptocurrency trading services; cryptocurrency exchange services; cryptocurrency exchange services featuring blockchain technology; cryptocurrency payment processing; providing financial information in the field of digital currency, virtual currency, cryptocurrency, digital tokens, crypto tokens and utility tokens, and non-fungible tokens; issuance of non-fungible tokens of value used with blockchain technology for data storage and content access limitation; financial services, namely, providing liquidity services in the nature of currency exchange services in connection with digital currencies and assets, cryptocurrencies, virtual currency and blockchain-based assets
36 : provision of an online marketplace for buyers, sellers, and traders of downloadable digital goods authenticated by non-fungible tokens (NFTs); provision of an online marketplace for buyers, sellers and traders of virtual and digital assets, artwork, collectibles, and non-fungible tokens; online marketplace services, namely, providing an online marketplace for buyers, sellers and traders of digital currency, virtual currency, cryptocurrency, digital tokens, crypto tokens and utility tokens; providing a website featuring an online marketplace for buying, selling and trading virtual goods with other users; develop and design virtual retail stores, virtual stores, and virtual showrooms for others provision of an online marketplace for buyers and sellers of downloadable digital goods authenticated by non-fungible tokens (NFTs); provision of an online marketplace for buyers and sellers of downloadable digital art images authenticated by non-fungible tokens (NFTs)
42 : non-downloadable software for virtual reality, augmented reality, and mixed reality; non-downloadable software for enabling users to experience virtual reality and augmented reality visualization, manipulation, and immersion; non-downloadable software to allow users to perform e-commerce and financial transactions; non-downloadable software to allow users to make payments, transfer funds, and processing payments; non-downloadable software to allow users to buy, sell, and trade financial instruments; non-downloadable software for digital, virtual, and crypto currency wallets and storage; non-downloadable software to allow users to access, maintain, store, display, buy, sell, and trade virtual and digital assets, artwork, collectibles, and non-fungible tokens; non-downloadable software for sending, receiving, accepting, buying, selling, storing, transmitting, trading and exchanging digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; non-downloadable software for use in financial trading; downloadable software for use in financial exchange; providing a website with information on financial instruments, financial exchanges, digital wallets, virtual wallets, cryptocurrency wallets, digital assets, digital artwork, digital collectibles, non-fungible tokens, digital currency, virtual currency, cryptocurrency, digital tokens, crypto tokens and utility tokens; platform as a service (PaaS) featuring computer software platforms for providing access to crypto-collectibles, crypto-art, and application tokens; authentication and certification of data relating to cryptocurrency and non-fungible tokens (NFTs) via blockchain; authentication of data in the field of blockchain tokens and smart contracts using blockchain technology; authentication of data in the field of collectables and art using blockchain technology; authentication of data in the field on non-fungible tokens (or NFTs) using blockchain technology; electronic storage of cryptocurrency for others; electronic storage services for archiving electronic data; providing a website for the electronic storage of fungible and non-fungible tokens; providing user authentication services using blockchain-based software technology for cryptocurrency transactions; and non-fungible token marketplaces and auctions; design and provision of online platform to facilitate the transactions of cryptocurrency and non-fungible tokens (NFTs); providing a website featuring technology that enables users to electronically trade, store, send, receive, accept and transmit digital currency and non-fungible tokens; computer services, namely, hosting an interactive web site that allows registered users to create and sell NFTs, to design and create customized profile pages, to interact with one another (whether based on NFT ownership or not), and to buy, sell, and trade NFTs; computer services, namely, hosting an interactive website that allows registered users to purchase, collect, hold, and transfer various blockchain tokens, smart contract rights, and/or non-fungible tokens (NFTs) (all collectively blockchain assets), to view their collection of blockchain assets through a user interface, and to buy, sell, trade, or offer to buy, sell, or trade the blockchain assets
|Gabrielle Studio, Inc.||DKNY||09 : downloadable virtual goods, namely, computer programs featuring clothing, colors, badges and tools for use in online virtual environments.
41 : entertainment services, namely, providing on-line, non-downloadable virtual clothing, colors, badges and tools for use in virtual environments created for entertainment purposes.
|Puma SE||09 : downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys, and accessories for use online and in online virtual worlds; downloadable computer software for interactive games for use via a global computer network and through various wireless networks and electronic devices; downloadable software for engaging in social networking and interacting with online communities; downloadable software for accessing and streaming multimedia entertainment content; downloadable software for providing access to an online virtual environment; downloadable computer software for the creation, production and modification of digital animated and non-animated designs and characters, avatars, digital overlays and skins for access and use in online environments, virtual online environments, and extended reality virtual environments.
35 : providing an interactive website and computer application software for virtual reality game services.
41 : entertainment services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys, accessories, digital animated and non-animated designs and characters, avatars, digital overlays, and skins for use in virtual environments; virtual reality and interactive game services provided online from a global computer network and through various wireless networks and electronic devices; entertainment services, namely, providing online non-downloadable game software and online video games; entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure, or entertainment purposes; entertainment services, namely, providing an online environment featuring streaming of entertainment content and live streaming of entertainment events; entertainment services in the nature of organizing, arranging, and hosting virtual performances and social entertainment events.
42 : non-downloadable computer software for the creation, production and modification of digital animated and non-animated designs and characters, avatars, digital overlays and skins for access and use in online environments, virtual online environments, and extended reality virtual environments.
|Nike, Inc.||NIKE||09 : downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in online virtual worlds.
35 : retail store services featuring virtual goods, namely, footwear, clothing, headwear, eyewear sports bags, backpacks, sports equipment, art, toys and accessories for use online; on-line retail store services featuring virtual merchandise, namely, footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories.
41 : entertainment services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use in virtual environments.
Other entities that have similar filings are Ralph Lauren (in respect of store services in Class 09, virtual products for online virtual worlds in Class 35 and online, non-downloadable virtual products for virtual environments in Class 41) and Walmart (for virtual reality game that features a virtual version of a store selling virtual goods), amongst others.
Multiple applications for this space have also been filed by the likes of Alibaba Group Holding, Tencent Holdings and ByteDance. which are pending review at the Trade Marks Office, China, while some have already faced rejection.
Recently, two trade mark applications were filed in the US by third-parties for the Gucci and Prada logos in a range of metaverse-related arenas, including downloadable virtual goods, virtual worlds and virtual clothing used in virtual spaces. On metaverse platforms with user-generated content, such as Roblox, creators are currently selling clothes that feature logos from the likes of Louis Vuitton, Prada and Chanel.
In another recent news, luxury fashion house Hermès initiated legal action against artist Mason Rothschild for launching a follow-up collection after previously selling an NFT artwork “inspired” by the iconic Birkin bag. Hermès stated that the NFTs “infringed upon the intellectual property and trademark rights of Hermès and are an example of fake Hermès products in the metaverse”. Their cease and desist letter was replied to by way of an open letter on his Instagram account.
Therefore, businesses need to understand the importance of IP prosecution and enforcement in this space before it is too late.
Filing Trademarks for the Metaverse
While filing trade marks for the metaverse, one must consider the word / device mark, logo, tagline, shape of products, packaging, colour combination and the non-conventional marks such as architecture and layout, and sound / motion / hologram / pattern / smell / taste marks.
Further, while the Nice Classification is yet to be updated to accommodate the recent development, the relevant classes at present would be 9 and 42 as the primary classes and 35, 38 and 41 as the secondary classes. to cover virtual products / spaces / stores, non-downloadable products, downloadable virtual products, NFT, crypto / digital coins/tokens/currency, digital overlays/animation etc. as the specifications.
The theory of zone of expansion, that is, a consumer’s assuming a relation / connection of certain goods or services with a brand offering similar goods or services, would come to the rescue in the matters of conflict in the metaverse. For example, if a business deals in clothing under its mark / brand, the said entity may be able to prevent a third party from using their mark / a similar mark for virtual clothing and footwear. The points of contention would, however, be to prove the first user of the mark, that is to prove the first use in the metaverse, and also reasonable deception and confusion even if the trade channel, point of purchase, purpose and consumer base are different.
With the rise in and new found need for virtual events, the time is not far that the virtual world would be the space with much activity. There would be a plethora of entities making money off of providing goods and services in the metaverse to increase virtual footfalls at such events. This would be a breeding ground for IP (specifically trade mark) infringements.
Even if the infringers do not copy the trade marks, infringement of other IP rights in the trade dress, copyright and / or design would be rampant. There would be a need for innovative protection of IP rights, such as the hospitality industry protecting their physical location layouts (by way of 360 degree views) and the fashion industry protecting its artwork and designs. This would indeed be a brand’s and an IP practitioner’s nightmare in terms of due diligence by way of investigations, market surveys, trap purchases, takedowns, collection of evidence, seizure of products by way of raids etc. The IP offices and Courts would also have to change their traditional way of handling of such matters.
For more information on Metaverse, please write to us at email@example.com
A slice of the porky pie– TM and counterfeit in the food industry
By Arpit Kalra and Pranit Biswas
The taste of deceit in the food industry may come in various flavors including trademark/ brand dilution, substitution, concealment, unapproved enhancements, counterfeiting, mis-labelling and forgery. Of all these, the trade of counterfeit products in the food and beverage industry is massive, and booming, and likely the one which is most damaging from a health and safety perspective. While there may indeed be some overlap with respect to other kinds of food related frauds, it is worth noting that packaged foods are one of the most vulnerable to being counterfeited in the FMCG industry, given that packaging is a prominent part thereof.
To begin with, the packaging of a product is essentially recognized as a ‘trade dress’ in the world of Intellectual Property, and the same is granted due protection under Trade Marks law in India. Primarily, the overall image of the product including its shape, the colour combination, graphics or even its texture and other features of the like, falls under the ambit of a trade dress. On that premise, counterfeiting refers to the production of inferior quality goods, sold in the trade-dress of the original product.
For instance, in July 2021, a factory manufacturing counterfeits of the well-known TATA Salt was taken down by the Delhi police. The manufacturing unit set up in Barwala was primarily involved in the bulk production of inferior quality salt, packed in duplicate TATA Salt packaging.
Moreover, counterfeit goods of the staple Nandini Desi Ghee manufactured and distributed by the Karnataka Milk Federation (KMF) were seized in Bengaluru on a surprise raid in shops as warehouses. The investigation led to the discovery of another manufacturing unit that was dedicated towards the production of fake Nandini Ghee.
Impacts of Counterfeit Food
There is a high risk of food adulteration in cases of counterfeited food/beverages as in most cases, the ingredients that go into the product are either unclear or misinterpreted. This is because the objective of introducing counterfeited products into the marketplace is to deceive consumers by adopting similar/identical packaging and selling products of inferior quality at cheaper costs. Thus, the risk of such products containing unidentified allergens or hazardous/toxic substances is quite high.
Food- supplements packed with fake steroids worth INR 20 million had recently been seized from the possession of three individuals in Greater Noida, Uttar Pradesh who were engaged in the manufacturing and distribution of the same. The accused were ex-employees of pharmaceutical companies, who directed their experience towards producing fake supplements and selling them to gym-enthusiasts with duplicate packaging of foreign companies. According to sources, consumption of such unregulated supplements in unsupervised amounts can lead to serious side effects linked to the heart, kidneys as well as the liver.
Other scandalous food frauds in the industry includes the incident in Spain where a highly toxic chemical substance known as Aniline was contaminated into rapeseed oil and was sold as olive oil in local markets. This incident in 1981, saw the demise of over 1000 people who had consumed the same, and had succumbed to ‘Toxic Oil Syndrome’.
It is only natural that once a consumer encounters fake products of a certain brand, it is only natural that such a consumer would quit placing their trust on those brands. And the process of regaining the trust of the public may get quite cumbersome, and sometimes may even be impossible. Even otherwise, the sale of counterfeit products also lead to heavy losses incurred by the bona fide owner of the product, including but not limited to the loss of opportunity costs and goodwill.
In sum, companies face the brunt of the misdoings of others by literally paying the price for regaining their reputation and combating the removal of fake products across the market. This also forfeits the company’s survival in the market as it also leads to the tarnishing of long-term trust built with business partners.
According to a recent report, India has seen a spike by 24% in counterfeit cases, wherein incidents in FMCG sector has seen a spike by 63%. The food and beverage sector saw close to 250 incidents of counterfeit cases in the year 2019.
According to sources, manufacturers of counterfeit products in India often resort to supplying their goods in suburban and rural areas, owing to the lack of stringent quality checks in such areas, making the population belonging to such localities susceptible to health and safety hazards.
Trademarks as a weapon
By now it is established that food fraud is on the rise at the cost of the economy and public safety, however this is where trademarks may be used as one of the tools to combat the menace. While the objective of adopting trademarks by business entities is usually to make a mark in the industry (more on this: https://ssrana.in/articles/making-a-mark-with-your-mark/), the same may also be used to kill two birds with one stone. In the sense, companies must be encouraged to initiate prompt and appropriate legal action against such counterfeit goods as it would not only ensure the protection of their brand, but would also aid in eliminating food fraud to a certain extent.
However, other tools to tackle the same may include drastic and stringent measures such as –
- Cancellation of licenses of any manufacturer identified to be engaged in the production of counterfeit goods
- Strengthening quality check authorities and placing accountability on authorizations issued by them
- Establishing benchmarks for product packaging and encouraging the use of distinct elements such as holographic stickers, disclaimers on packaging, etc. to aid consumers identify genuine goods from fake ones.
- Sensitizing the general public on the topic and creating general awareness, including steps such as mass mobilization on the issues involved.
Moreover, companies like Nestle and Nova have taken active steps like frequently changing their labelling and aggressively marketing the same to aid the consumer in identifying the right products.
Another valuable tool to tackle the problem is to register ones registered trademarks with the Customs Authorities in India, which would protect the brand from import of counterfeit goods carrying the mark in question, into India (for more information, please see https://ssrana.in/articles/custom-recordal-india/).
Nevertheless, while it may be common to find small scale businesses engaging in copying products of pre-established giants, it is also not uncommon to find big companies copying products of small scale local businesses and selling counterfeits, as their own. Such was the case in the United Kingdom, where recently, Marks & Spencers, a well-established company, took a slice of the porky pie. The product in question: The Perfect Match by Choc on Choc, a small-scale local business. The original product (introduced by Choc on Choc) was essentially two pieces of chocolates shaped like matchsticks with the tag ‘The Perfect Match’ engraved on it and it was introduced in light of Valentine’s Day approaching. M&S on the other hand, went ahead and introduced a blatant copy of the said product, passing it off as their own, least expecting that Choc on Choc had in fact duly registered the tagline ‘The Perfect Match’ along with their product. When Choc on Choc addressed the issue and publically called out the copycat products by M&S, being sold without their permission, it attracted much traction in the public. However, M&S was quick in covering up their tracks and in turn struck a deal in collaboration with Choc on Choc, claiming that they believe in giving credits where it was due and firmly trusted in promoting small-scale businesses. Such a recovery by M&S at the outset looks brilliant for their PR, but let that be a discussion for another time.
The menace of counterfeited goods has been rampant in recent times. However, it may be worth laying down certain guidelines for the restoration of all the elements of the economy, impacted by the circulation of counterfeit goods. Encouraging steps such as verification of goods and their licenses at the micro-level, i.e. by the local distributors before accepting stock, incorporation of Blockchain technology and other tools such as tamper/copy-proof holograms, may aid in combating the problem. Additionally, placing a certain level of accountability on such distributors for failing to do so may act as a catalyst in the success of such a system. Nevertheless, power also lies in the hands of the consumers, who must empower themselves and be extremely wary of such products while shopping.
Girishma Sai Chintalacheruvu, Associate at S.S. Rana & Co. has assisted in the research of this article.
 British Slang for ‘a lie’
 Source: Indian Express, 08th January 2021 https://www.newindianexpress.com/states/odisha/2021/jan/08/poison-on-the-plate-markets-see-rise-in-fake-food-products-2247212.html
INDIA: FSSAI FOOD DONATION REGULATIONS
Production Linked Incentives PLI in Food Processing: An Uncertain Future
Proposal for Appointment of Prof. Unnat P. Pandit to the post of CGPDTM
According to Information Note dated February 24, 2022 (No. 10/10/2021-EO(SM-II) the Appointments Committee of the Cabinet has approved the proposal for appointment of Prof. Unnat P. Pandit, Professor of IP Innovation, and Entrepreneurship and Chairperson, IPM Cell, JNU to the post of Controller General of Patents, Designs and Trademarks (CGPDTM), Mumbai.
It has further been notified that the Prof. Unnat P. Pandit’s name for CGPDTM has been sent to the Department of Promotion of Industry and Internal Trade (DPIIT).
Mr. Pandit, has also formerly served as the Officer on Special Duty to the then Commerce & Industry Minister, Smt. Nirmala Sitharaman and has also been instrumental in initiatives/ programs taken up at the NITI Aayog. He was also a Former Member of the IPR Think Tank constituted by the Government of India to draft the National IPR Policy of India.
At present the Office of the CGPDTM is headed by Shri. Rajendra Ratnoo, IAS, Joint Secretary, DPIIT.
Change in Amounts of Individual Fee while designating Singapore
By Arpit Kalra and Abhishek Chandok
The Government of Singapore has notified to the Director General of the World Intellectual Property Organization (WIPO) a declaration modifying the amounts of the individual fee payable in Swiss francs with respect to Singapore under Article 8(7) of the Madrid Protocol.
Revised Fee Structure while designating Singapore
(in Swiss francs i.e. CHF)
|Until May 07, 2022||With effect from May 08, 2022|
|Application or Subsequent Designation for each class of goods or services||242||261|
|Renewal for each class of goods or services||270||302|
The new amount will be payable in the following scenarios:
- When designating Singapore in an international application.
- When designating Singapore subsequently in an international application.
- When renewing an international registration in which Singapore has been designated.
The official notice issued by WIPO can be accessed.