Luxury watches are coming to the Metaverse. Sportswear brands such as Nike and adidas, and fashion companies such as Gucci, Versace and Ralph Lauren are not the only ones observing the burgeoning combination of the “real” and virtual worlds and filing for registration brands for using their brands in the so-called “metaverse” in the process. Luxury watchmakers seem to be increasingly considering their role in the virtual world, and in an increasing number of cases they are filing trademark applications with the United States Patent and Trademark Office (“USPTO”) and other national trademark organizations to register their names and logos. – and more interestingly, their famous watch faces – in virtual form.
One of the most recent efforts on this front comes from Audemars Piguet, which filed a trademark application for a trademark that consists of the “configuration of a watch dial with a bezel having a circular interior shape and an octagonal outer shape with gently rounded sides as well as eight exposed screws set into the corners of the octagonal shape and forming an outer ring around the glass of the watch face. intent-to-use application – which was filed with the USPTO on February 23 and cites imminent uses in Classes 9 (downloadable virtual goods), 35 (retail store services featuring virtual goods), and 41 (entertainment services, namely, online supply, goods) – is a nod to the design of the Swiss watchmaker’s Royal Oak.
This is not the only pending trademark application of this type, Panerai has filed a Class 9 Application with the USPTO in January for a mark that consists of a “circular watch face design” with a dial that features “oversized stylized numerals ’12’, ‘3’, ‘6’, and ‘9’ and markers with remaining positions of the hour”, and the “stylized mention “PANERAI” [that] appears below the ’12’ o’clock position.
Meanwhile, Bulgari filed an application with the European Union Intellectual Property Office in January for a trademark that extends to the dial elements of its Octo Finissimo watch for use in Classes 9, 14 (i.e., “watches and jewelry incorporating digital codes, labels, tags and chips linked to a non-fungible token”), and 35.
Secondary meaning in the metaverse
Efforts by watchmakers to protect the source identification configurations of their famous products are not new. Brands ranging from Panerai to Patek Philippe retain trademark rights to – and in a significant number of cases, registrations for – elements of their watches for use on physical watches, watch parts and retail services. correspondents. And in the same way that they had to establish that their product designs had acquired distinctiveness for those marks to be registered by the USPTO – by showing that “in the mind of the public, the primary meaning of [the mark] is to identify the source of the product rather than the product itself,” pending trademark requests for their trademarks in the metaverse will no doubt also call for demonstrations of secondary meaning.
(When establishing secondary meaning for physical asset configurations, companies typically list five years of exclusive use in addition to a range of factors, such as ad spend, sales, coverage unsolicited media, etc. These elements may or may not be useful for brands seeking to register their brands for use in the metaverse due to limited brand activities in this burgeoning space to date.)
The notion of secondary meaning in the metaverse (which we’ve already covered here) will certainly raise some interesting – and potentially new – questions, including how you assess or prove secondary meaning of products in the virtual world.
“The typical strategy of listing five years of use of the mark in commerce in connection with the goods does not appear to apply here,” the trademark attorney and former USPTO attorney attorney, told TFL. Ed Timberlake, given that few brands have operated consistently in the virtual goods space during this time. And while the USPTO is free to accept other evidence to demonstrate acquired distinctiveness, it’s too early to say which marks are likely to submit – and what the USPTO will find persuasive. Currently, the USPTO has not reviewed many – if any – trademark applications for virtual product configurations; Audemars Piguet’s application of February 23 is perhaps the first on this front and could therefore provide a model for future applicants.
“In these circumstances,” says Timberlake, “evidence of prior trademark registrations might be the most attractive strategy,” which of course raises the question of whether a company’s tangible assets from registrations would be considered “sufficiently similar to the virtual goods”. products identified in the pending registration application(s) for the purpose of establishing that distinctiveness as to source has been acquired.
Watches in the Metaverse
The impulses behind brands’ attempts to search for records of virtual goods are many, one, of course, being plans to participate in the virtual world to some degree – if only for the sole reason of potentially building stronger rights to fend off inevitable infringement. Non-fungible tokens (“NFTs”) tied to images of Rolex watches, for example, have populated marketplaces like OpenSea and LooksRare. The same goes for Audemar Piguet, Patek Philippe, Paneria, Bulgari, etc. In fact, operating in the metaverse could give brands more leeway to invoke likelihood of confusion, for example in a trademark infringement case.
At the same time, it should be noted that while many luxury watch brands are not rushing to appear on any of the existing metaverse platforms, others are making inroads without them. Swiss watchmaker Richard Mille, for example, is at the center of another party’s NFT business – albeit in a seemingly unaffiliated capacity. The owner of Bored Ape 6068 – known as Richape Mille – recently revealed a collection of NFTs called Metalus. (Note: Unlike the terms attached to most NFTs, purchasers of Bored Ape Yacht Club NFTs retain commercial rights to their monkeys and therefore may use their monkey images in a variety of ways..)
Comprised of “digital reproductions of 100 of the most iconic timepieces in watchmaking history” – from Patek’s Nautilis to Rolex’s Daytona, the Metalus collection is the “way to pay homage to an iconic piece of history of watchmaking, the Patek Philippe Nautilus” by Richape Mille. of the project’s founders, Hannu Siren told Bitcoinist. Prior to that, Jesus Calderon launched Gen Watches, which exist as “digitally rendered parodies” of famous timepieces, Hodkinee reported in January. Among Calderon’s JPG or GIF offerings? Rodex Daitonas and Rodex Bitmariners. The rise of these third-party uses may cause brands to think about how they can participate in the virtual world, if only to “own” the space – and exert careful control over the experience – when it’s about their famous brands.
Yet, in the same way that watchmakers release limited products aimed at deep-pocketed brand enthusiasts (one thinks of the latest offering from Tiffany & Co. in collaboration with Patek Philippe), it is easily conceivable that watchmakers will court the collectors, some of which may also be crypto fans, through limited-edition NFT-related offerings.
But beyond purely creative uses of their famous products in the so-called metaverse, the likely outcome (and arguably stronger use case) for hardline luxury brands in the virtual world will likely be a combination of creative products and uses born from a utility perspective, hence the reference to NFTs in many trademark applications of watch brands.
Speaking about the potential for NFTs to be used in connection with Tag Heuer products, CEO Frederic Arnault recently said that owner LVMH “believes blockchain can transform” luxury brand operations by “giving digital ownership to consumers, among others. Arnault’s father, LVMH Chairman Bernard Arnault, has strongly opposed the idea of selling entry-level virtual products, Frederic says the group sees potential in terms of “track[ing] products in the supply chain and then selling those products with a digital twin,” which could take the form of an NFT.
Bulgari and Hublot currently use LVMH’s Aura blockchain technology, and last spring Tiffany & Co. was seen as the next “obvious” brand to give it a shot. And meanwhile, other watchmakers, such as Ulysse Nardin, owned by Kering, and Vacheron Constantin by Richemont, have been deploying blockchain certification in their watch collections for several years.
As for an example that could prove to be a model for others in the future: the very recent “Panerai entry into Web3”. In partnership with blockchain technology provider Arianee, the Swiss watchmaker has unveiled the Radiomir Eilean Experience Edition, a limited edition watch available in just 50 pieces that is linked to NFT technology. “Each buyer will receive from Panerai one of 50 Panerai Genesis NFTs associated with the Radiomir Eilean watch in a unique crypto wallet allowing them to truly own this non-fungible token,” Richemont-owned Panerai revealed on Wednesday.
“The digital asset will unlock exclusive content directly related to Panerai Experience Edition watches, and will evolve as the experience unfolds to reveal the artwork,” according to Panerai, and will give owners “access priority to all future Panerai Web3 initiatives and be invited to take advantage of the brand’s exclusive services, events and offers.
In a nod to how it will use Web3 browsing and NFTs in the future, Panerai says its inaugural offering “represents the start of a deep commitment” and that “over time, every Panerai watch will receive a digital passport, as a service”. to protect its precious singular identity, maintain an open line of communication with the brand, and unlock benefits and services.
Chances are that brands in the same situation will follow suit.