NFTs (Non Fungible Tokens) are numeric codes that function as a record of register of digital content, ensuring authenticity through certification. There are many companies that make millions of dollars in this business. For example, the NFT for the first tweet in history was auctioned for $2.9 million and Solana’s NFT Marketplace (Magic Eden) raised $130 million in a round of investments this month.
The subject is increasingly on the rise worldwide and, for now, the WIPO – World Intellectual Property Organization and the National Industrial Property Institutes have not yet reached a consensus on how to frame these tokens in the international classification of trademarks.
In Brazil, we use the 11th edition of the Nice International Classification (NCL 11 of 2022). Brazilian PTO also created national auxiliary lists as a way to complement the official relation. This classification system is divided between products (classes 1 to 34) and services (classes 35 to 45), so we register a trademark in classes, depending on the branch of activity in which it is used. This is the principle of the specialty of trademarks.
BPTO’s official database reveals only four trademarks registered in class 09 (digital token for registration of non-fungible goods/digital materials, namely, non-fungible tokens (NFTs)) and one trademark registered in class 42 (software as services (SaaS) and platform as service (PaaS) containing software to exchange, view and administer digital art, crypto-collectibles, non-fungible tokens and other application tokens […]) mentioning NFTs.
The expression “digital token” appears in the trademarks descriptions not only in the above mentioned classes, but also in class 45 (authentication services) and in class 36 (which includes encryption tokens and digital currencies). It is also relevant to mention class 38 (telecommunications, provision of avatar-based communications services, streaming [distribution], dissemination, webcasting and content transmission) and 41 (news and education services) related to this topic.
The protection of “digital products” is not new in Brazil, we have trademarks already registered before BPTO for “portable digital products” in class 09, for example, in the 1990s. However, there are currently goods previously unavailable, which leads to the need for new trademark protections. For example, in class 35, which is one of the most wide class, we have found brands granted for “advertising”, “marketplace”, and “trade” of digital products such as: avatars, environments, tools, toys, emoticons and even gestures for use in online virtual worlds.
Some trademarks arrived in Brazil as designation of international registrations (Madrid Protocol). Although they do not exceed the number of national/direct records, they bring advanced concepts of technology in their descriptions. It is not yet possible to know if the BPTO will grant trademarks of products that carry the expression “NFT”, but there are already several processes awaiting the judgment of the Institute, such as, for example, covering NFT games in class 28.
Finally, it should be remembered that the BPTO has considered the word “NFT” in the trademark element (nominative description of the trademark) as generic and descriptive, without distinctiveness, in classes 09 and 42, which violates item VI of Art. 124 of the Industrial Property Law (Law No. 9.279/96). Therefore, it is advisable to seek a professional specialized in intellectual property to receive appropriate guidance in order to avoid refusals and obtain proper protection in Brazil and abroad.