[Patent Talk] Trademark Filing Strategies Under KIPO's New Examination Guidelines for Virtual Goods

As trading in virtual goods in virtual spaces such as the metaverse has grown and related trademark applications have increased, KIPO has prepared "Examination Guidelines for Virtual Goods," which took effect on the 14th of this month. Previously, trademark applications relating to virtual goods could designate little more than "downloadable image files" in Class 9, and the lack of clear standards for assessing similarity between real-world goods and virtual goods, and for interpreting the scope of rights after registration, caused confusion in practice.

First, to align with international trends, KIPO classified virtual goods in Class 9 but created separate similarity group codes for virtual goods, distinct from the existing "downloadable image files." However, the term "virtual goods" itself is not accepted because it is a broad, general term; only names that specify virtual versions of concrete real-world goods are allowed. Accordingly, although all virtual goods are classified in Class 9, goods with different similarity group codes, such as virtual clothing (G520743, G520745), virtual hats (G520745) and virtual footwear (G520727), are treated as dissimilar to one another.

The most noteworthy part of the new guidelines is that virtual goods and real-world goods are, in principle, treated as dissimilar. For example, real-world footwear falls under similarity group code G270101 in Class 25, while virtual footwear falls under similarity group code G520727 in Class 9. Because they are dissimilar, a mark can be filed and registered for virtual footwear in Class 9 even if someone else has an earlier-filed similar mark for footwear in Class 25. KIPO noted, however, that where a well-known or famous mark exists, there may be a likelihood of confusion even between virtual and real-world goods, so the application may be rejected under Article 34(1)(xi) and (xii) of the Trademark Act.

With the implementation of these guidelines, businesses selling metaverse-related virtual goods need to file an application to add designated goods specifying each virtual item, or file a new application, even if they have already filed for "downloadable image files" in Class 9. Based on the guidelines, a registration for "downloadable image files" is unlikely to extend to virtual goods.

Meanwhile, for businesses that sell only real-world goods, a defensive trademark application for virtual goods in Class 9...