TÜRKPATENT follows Nice Classification for marks covering new technology

The scope of trademark applications is crucial when it comes to protection and enforcement. Consequently, accurately analysing, identifying and classifying the goods and services designed to be covered by a mark, as well as potential use, is crucial.

Following recent technological developments, how to classify emerging goods and services has been the topic of much discussion both at the national and international levels. Concurrently, the European Union Intellectual Property Office (EUIPO) and the USPTO have taken similar approaches and provided their guidance for classifying these goods and services even before the 12th edition of the Nice Classification came into effect on 1 January 2023.

In sharp contrast, the Turkish Patent and Trademark Office (TÜRKPATENT) is yet to publish any official guidelines on these issues. Nevertheless, the specifications already accepted for registration by TÜRKPATENT and the current edition of the Nice Classification shed some light on how to apply for a trademark and gain protection for these goods and services in Turkey.

EUIPO guidance

As a result of the increasing number of applications containing terms relating to virtual goods and non-fungible tokens (NFTs), the EUIPO provided specific guidance for the classification of virtual goods, NFTs and the metaverse on 23 June 2022. According to this:

• virtual goods are appropriate for Class 9 but must be further defined by clarifying the content to which they relate (eg, downloadable virtual goods – namely virtual clothing);
• NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital items but are distinct from them, and the type of digital item authenticated by the NFT must be defined; and
• services that are related to virtual goods and NFTs will be classified in accordance with established principles.

USPTO handout and updated manual

Similarly, the USPTO has published a handout – “Registering trademarks for newer technologies: NFTs, blockchain, cryptocurrency, and virtual goods” – including:

• descriptions of NFT, blockchain, cryptocurrency and virtual goods;
• examples of acceptable identifications involving NFTs in Classes 9, 25 and 35;
• examples of acceptable identifications involving blockchain in Classes 9, 35, 36 and 42;
• examples of acceptable identifications involving cryptocurrency in Classes 9, 36, 42 and 45;
• examples of acceptable identifications involving virtual goods in Classes 9, 35, 41 and 42; and
• practice tips, including but not limited to, likelihood-of-confusion refusals for real versus virtual goods.

Additionally, the current version of the Trademark ID Manual of the USPTO provides guidance for classifying these newly emerging goods and services.

Key updates in the 12th Edition of the Nice Classification

The latest edition of the Nice Classification took effect on 1 January 2023 and updates certain classes in line with recent technological developments.

Some of the modifications introduced in this current edition in connection with the classification of NFTs, the metaverse and crypto assets are as follows:

• Class 9 has been updated through the addition of “downloadable digital files authenticated by non-fungible tokens [NFTs]”. Additionally, the amendment of “downloadable computer software for managing cryptocurrency transactions using blockchain technology” to “downloadable computer software for managing crypto asset transactions using blockchain technology” broadens the terminology to include NFTs.
• Class 41 has been updated with the addition of “providing online virtual guided tours”, containing metaverse activities.
• Class 42 has been updated through the amendment of “cryptocurrency mining/crypto mining” to “mining of crypto assets/crypto mining”, with the term ‘cryptocurrency’ being replaced with the broader ‘crypto asset’ clearly including NFTs.

Despite this, some of the specifications involving crypto assets, blockchain and virtual goods and services in Classes 9, 36 and 42 were identical to those in the previous edition.

TÜRKPATENT’s approach

TÜRKPATENT has adopted a system that closely follows the Nice Classification. The latest ”Regulation on the Classification of Goods and Services related to Trademark Applications” adopted by TÜRKPATENT was published in its Official Gazette on 20 December 2016 and took effect on 1 January 2017.

After discussions on the classification of newly emerging technologies, including NFTs and virtual goods, during TÜRKPATENT’s “Classification of Goods/Services of Trademark Applications” webinar in October 2022, a new regulation was expected to come into force at the beginning of this year, to coincide with the latest edition of the Nice Classification. However, no amendments have yet been issued and TÜRKPATENT is yet to publish guidelines for classifying goods and services in connection with newly emerging technologies.

In the meantime, however, goods and services utilising these emerging technologies have been included in the scope of various trademark registrations obtained before TÜRKPATENT.

For instance, Levi Strauss & Co has obtained national registrations for six trademarks (2022 037989, 2022 038005, 2022 038026, 2022 038056, 2022 038082 and 2022 038139) in Classes 9, 35 and 41, among others, for the below-listed goods and services before TÜRKPATENT:

09: Downloadable virtual goods, namely, digital images, digital clothing and digital graphic designs authenticated by non-fungible tokens created with blockchain technology to represent a collectable item.

35: The bringing together, for the benefit of others, of virtual goods, namely, clothing made of any kind of material … images and videos for use in virtual online environments and virtual online fashion shows to enable customers to conveniently view and purchase those goods (such services may be provided by retail stores, wholesale outlets, means of electronic media, through mail order catalogues and other similar services).

41: Entertainment services, namely, providing on-line, non-downloadable virtual goods, in the nature of clothing … images and videos for use in virtual online environments and virtual online fashion shows.

Tether Operations Limited has obtained national trademark registrations (2022 104344 and 2022 120989) in Classes 9, 36 and 42, including but not limited to:

• “downloadable computer software for managing cryptocurrency transactions using blockchain technology" in Class 9;
• “financial exchange of crypto assets; financial services provided via blockchain” in Class 36; and
• “blockchain financial platform development services; design, development, implementation and consultancy in software in the field of blockchains" in Class 42.

The national trademarks of Chambre de Commerce Internationale (2021 026993 and 2021/027011) have been accepted for registration for “crypto asset banking, investment and transfer services including in relation to cryptocurrencies” and “custody services in relation to crypto assets including cryptocurrencies”, among others, in Class 36 before TÜRKPATENT.

These are only a few examples of applications that have included specifications involving blockchain, virtual goods, NFTs and other crypto assets and that have been accepted before TÜRKPATENT.

A considerable number of trademark applications filed before TÜRKPATENT, especially by Turkish individuals and companies, directly use the classification of goods and services published by TÜRKPATENT dating back to 2017.

In light of this, and for the time being, applicants should check the most recent edition of the Nice Classification in addition to the current classification system used by TÜRKPATENT to define the exact scope of their trademark applications.