Emerging technology trade marks: where we are now and why more guidance is still required

Recent trends and global developments 7 min read

Since the release of new guidance by IP Australia in 2023 (which we previously reported here and here), Australia has yet to see a landmark decision on trade marks for emerging technologies such as artificial intelligence (AI), non-fungible tokens (NFTs) or blockchain.

However, recent trends in trade mark filings indicate that emerging technology trade marks remain popular (including for businesses outside of the technology industry), while recent global developments in trade mark registration guidance highlight some ongoing uncertainty and challenges for trade mark owners.

In this Insight, we explore the latest trade mark filing trends and highlight notable international developments.

Key takeaways

• So far in Australia in 2024, filings of emerging technology trade marks have generally remained at similar levels as previous years, but continued to grow for AI trade marks. Filings have been made by a multitude of industries, not only the technology industry.
• Following IP Australia's release of its new guidance in mid-2023, more jurisdictions have released their guidance on the classification of emerging technology trade marks for registration purposes, with the general position being that the goods or services must be sufficiently specific.
• We are still awaiting further guidance in Australia on emerging technology trade marks in other contexts – including in relation to oppositions, non-use actions or enforcement. However, the general position in Australia (and the EU and South Korea) is that virtual goods are not similar to real world goods – this is different from the position in the US.

Australian filing trends in 2024

So far this year, Australia has maintained a similar rate of filings of emerging technology trade marks at 2022-2023 levels. However, filings of trade marks specifying AI have continued to grow, as shown in the chart below.

While unsurprisingly large technology companies have dominated filings for emerging technology trade marks, it is interesting to see that businesses from a wide range of other industries have also made significant filings for emerging technology trade marks – particularly from the sports, gaming, pharmaceuticals, cosmetics, fashion, automobiles and eyewear industries. This shows that emerging technologies can be highly relevant to businesses in any industry – not only the technology industry – to warrant new trade mark filings to protect their commercial interests.

Global developments in registration guidance

For trade mark owners currently filing or considering filing applications for emerging technology trade marks, it is important to be aware that since IP Australia's release of its new guidance in 2023, other jurisdictions have also released their guidance on the classification of emerging technology trade marks for registration purposes.

The general position is that the goods or services must be sufficiently specific. For example, a broad claim for 'virtual goods', 'non fungible tokens', 'providing services in the Metaverse' or 'blockchain' would generally not be acceptable. Instead, the claim should specify the nature of goods that are virtual (eg, 'virtual clothing'), the goods or services that are linked to the NFT or blockchain (eg, 'footwear authenticated by non fungible tokens'), or the purpose of the services provided in the Metaverse (eg, 'online retail services for virtual clothing via the Metaverse'). The specification of those goods or services would then determine the classification – although virtual goods are generally classified in class 9.

Further guidance is also still pending in Australia on how emerging technology trade marks will be considered in other contexts – including in relation to oppositions, non-use actions or enforcement – with no Trade Marks Office or court decisions specifically considering emerging technology trade mark to date. Key questions to be confirmed include:

• whether real world trade marks could be enforced against virtual trade marks (including whether virtual goods would be considered similar to real world goods); and
• what would constitute ownership and use of a virtual trade mark in a particular jurisdiction.

IP Australia's current position during the examination process is that virtual goods are not similar to real world goods. This position, if also adopted by the courts, would mean that it is likely to be difficult to enforce an existing real world trade mark against a virtual trade mark (other than a claim under s60 of the Trade Marks Act 1995 (Cth) which protects well-known marks even if the goods or services covered by the two marks are unrelated).

Different jurisdictions have taken different positions or are yet to provide any kind of guidance on this issue – a comparison table is shown below for reference.

Actions you can take now

Given the current position in Australia (and varying approaches in other jurisdictions) in relation to emerging technology trade marks, businesses should consider:

• reviewing their portfolios and filing new applications to protect their trade marks in respect of emerging technologies (provided there is a genuine intention to use), rather than relying only on their existing registrations for real world goods or services; and
• monitoring and conducting clearance searches in all relevant jurisdictions for trade marks applied or registered for goods or services in relation to emerging technologies, which are potentially problematic for their use of existing trade marks, or the protection of existing registrations or the prosecution of new applications, for real world goods or services.