We are stepping into the new realm of the Internet, which may be regarded as
a new cyber bubble, because of the growing popularity of the metaverse. India
can be a booming market for virtual reality owing to the young population,
vibrant cyber ecosystem, and a huge talent pool. Apart from 'Big Tech' companies
like Facebook, which renamed itself as 'meta', Indian companies like Reliance
Industries Limited, Infosys, Tech Mahindra and Tata Consultancy Services are
also planning to enter the metaverse.
It is undoubtedly a new avenue, however, prone to infringement of the trademark.
Fortune 500 companies like Mc Donalds and Nike have already filed the trademark
with the United States Patent and Trademark Office ('USPTO'). It is an
indication that companies will certainly file Trademark in India as well.
The present article seeks to analyse the scope of Trademark in the metaverse in
India along with the growing challenges in the field of Trademark protection.
Decoding the concept of 'Trademarking in Metaverse'
The term 'metaverse' was coined by Neal Stephenson in his science fiction Snow
Crash" in 1992. It was, however, explained by Ernest Cline in the work 'Ready
Play World'. The term is derived from the conjuncture of two words, 'meta' and
'verse', meaning 'beyond the universe'. Metaverse is a parallel universe created
in cyberspace which allows its users to have a reality-based experience. The
technology of metaverse is created in such a way that the person can enjoy food,
have and even buy and sell the property. Hence, the Companies are securing their
brands in the metaverse.
Possibility of Trademark infringement in Metaverse
With the new avenues of Internet 2.0, there is a parallel need to approach the
protection of the trademark in Metaverse. The Trademark Act, of 1999 provides
for the protection of trademarks. The intention of the said Act was elaborated
in the celebrated case of Cadbury India Limited vs Neeraj Food Products that the
purpose of trademark legislation is to protect the trader and consumer against
dishonest adoption of one's trademark by another with the intention of
capitalising on the attached reputation and goodwill.
Section 29 of the Act bestows against the infringement of registered trademarks,
but only upon the class in which it has been registered. Clause (1) of the
section reads as-
29. Infringement of registered trademarks:
- A registered trademark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use, uses in the
course of trade, a mark which is identical with, or deceptively similar to,
the trademark in relation to goods or services in respect of which the
trademark is registered and in such manner as to render the use of the mark
likely to be taken as being used as a trademark..."
Since, it is clear that the goods registered in a class are protected and not
otherwise, the trademark in the metaverse is prone to infringement. Let's clear
this with an example. Brands have registration in their own class. Like, as
clothing and Footwear being trademarked under Class 25, Coffee and teas in Class
30, or Legal Services in Class 45 of the Fourth Schedule of Trademark Rules,
2002. Now, a person may file the trademark for the Clothing, Footwear, or legal
services in the virtual world under Class 42, because it is permitted under
Trademark law (Nandhini Deluxe v. Karnataka Co-Operative Milk Producers
Now, for an example, imagine you went for the Mahindra Thar in the metaverse,
not owned by its owner in the real world; the experience was below standard.
Will you prefer it in the real world? Most would answer in negative. As pointed
out in Mr. Arun Jaitley v. Network Solutions Private Limited, 'the popularity or
the fame of any individual or the company will be no different on the computer
(or internet) than reality. Hence, the opinion created in the metaverse may
impact the opinion in the physical world.
From the above instance, the brevity and clarity of Trademarking framework in
the Metaverse may be observed. Trademark of the brands in the metaverse will
help them have their rights secured. Additionally, the said allegation of
infringement could have a defence of the Normative fair use policy, under
Section 30. It may be interpreted that infringement of a trademark in the
metaverse is open to various interpretations when it goes to litigation.
Additional Challenges of protecting Trademark in Metaverse
The inception of Metaverse has brought several challenges to the Trademark
regime. There still persist the issues-particularly in enforcement. Some of
these challenges may be condensed as:
Ascertaining jurisdiction (see the previous post on jurisdiction here) is
going to be a serious concern in the metaverse. What if the Trademark of the
Indian brand is infringed from Ecuador? Do the principle of 'Long Arm
jurisdiction' as observed in Swami Ramdev vs Facebook applicable in the
metaverse? In World Wrestling Entertainment v. Reshma Collection, the Delhi
High Court was said to have jurisdictions assuming that virtual shops have
the presence as physical shops. Similarly, the Courts may have the
jurisdiction where the parties reside but are still a question of chaos if
the infringer is from other jurisdictions.
- Use of Licensing
It is a million-dollar question whether the license obtained in the real
world will extend in the metaverse as well? For instance, will the trademark
of TATA Company be owned by the same person in virtual reality?
Additionally, what will be the scope of using that trademark licensing in
- Unauthorised Use of Trademark
There can be the possibility of unauthorised use of the trademark in the
metaverse. The trademark in the virtual world is more prone to
counterfeiting and misrepresentation. For instance, the avatar in metaverse
may wear the trademarked shoes of Nike. How the court will interpret such
virtual goods is an interesting fact to see in the near future.
It is also noticeable whether the metaverse creator like Sound Life or
Facebook, like the social media, will be treated as an intermediary under
Intermediary Rule 2021? If so, the metaverse providers will have their own
rules to regulate their respective platforms.
In respect of the above challenges which may be faced in the protection of
trademark in the metaverse, some below listed may be followed to dilute the
possibility of infringement.
The Bottom line
- The trademark protection should be extended to its virtual replica as
well. It should be like contracts that are enforced in cyberspace as well.
(Section 10A of Information Technology Act, 2000). The company may go for
the multi-class trademark registration including their products and services
in metaverse also. Extending it to Class 42 will enable them to enforce
their rights even in the metaverse. It will also minimise unnecessary
litigation and will save the time of both the Court and the parties
- Metaverse creators should firstly gauge the possibilities of
infringement of other companies' trademarks. The 'Terms of Service' should
secure brand protection. It may also seek the policing of Intellectual
Property, its valuation and management.
The major part of the discussion is the metaverse, indeed, will launch itself as
a revolution in the era of the internet, but will also pose challenges for the
legislation to regulate it in different spheres. Apart from this, there are
various challenges of privacy, data protection, piracy, plagiarism etc, in
virtual reality. Hence, it is an interesting dynamism of law that will be