What Web3 businesses should know about trademark registration with examples

Features of trademark registration for blockchain businesses

Country of Registration
Cryptocurrency, as an intangible asset, spans multiple jurisdictions simultaneously. Citizens from various countries can use different digital assets. To ensure maximum brand protection, it is advisable to register the trademark in multiple countries or regions, i.e., globally. This can be achieved by filing separate applications in specific countries or regions (for example, an EU application covers all 27 member states) or by extending the trademark’s scope through the World Intellectual Property Organization (WIPO).

Compliance with Legislation
Cryptocurrency is a new field, and not all countries have adopted legislation that provides clear rules for regulating digital assets. Laws in emerging industries can change frequently, so it is crucial to understand the legislation in the country where the trademark registration application is submitted.

Brand Protection
After trademark registration, it is vital to use the trademark in the industry for which it was registered. Failure to do so could result in losing the trademark, as other parties may file lawsuits to cancel the registration. Given the rapid development of the digital assets sector, it is recommended to monitor applications for similar brands and ensure proper use of your brand on the internet to prevent any infringements.

Class Selection

Choosing the appropriate classes of goods and services is one of the most complex legal steps in preparing a trademark application. It is important to note that there are no specific classes in the International Classification of Goods and Services (NICE) that exclusively cover digital assets. Goods and services should be selected from multiple classes based on the nature of the company’s activities. The most relevant classes may include:

Class 9: Cryptographic keys, software for managing cryptocurrency asset transactions via blockchain technology, and hardware for cryptocurrency wallets.

Class 36: Financial services, including specific services such as the transfer and exchange of cryptocurrencies electronically through blockchain technology, and services related to trading crypto-assets.

Class 41: Educational services, as the digital assets sector is still emerging, and many people lack knowledge in this field. Many crypto platforms offer sections for practical online learning.

Class 42: Cryptomining.

It is also advisable to register the trademark under Class 35, which includes advertising, marketing, retail services (e.g., digital assets), and providing online marketplaces for the sale of digital files authenticated by NFTs. In addition to the services listed, items not covered by the NICE Classification can be added, such as “software development for processing cryptocurrency transactions,” “services related to the security and protection of cryptocurrencies,” and “blockchain technology services for Class 42.” In Class 9, you could add “software for cryptocurrency wallets, electronic wallets, and other digital tools for working with cryptocurrencies.” In Class 42, you might add “educational services, namely, conducting online classes, training sessions, seminars, and workshops in finance, digital currency, cryptocurrency, and digital assets.”

Trademark Search

A trademark must be unique and original, differentiating itself from others in the same field. To ensure your brand does not infringe upon the rights of others, it is essential to search for identical or similar trademarks. If there are existing applications or registrations that could cause confusion with your brand, obtaining a trademark certificate may become difficult.

For example, Binance Holdings Limited registered the trademark “BINANCE” (No. 290813) in Ukraine in 2021 for software, financial services, and digital currency exchange. Similarly, Coinbase, Inc., a company specializing in digital assets, registered an international trademark with the same name (No. 1662699) for digital asset services.

While conducting a trademark search is not mandatory and does not directly affect the registration process, it is highly recommended in a dynamic industry like digital assets. Many trademark applications have already been filed, and numerous trademarks have been registered. A search can save both time and money in the long run.

Conclusion

We have never dealt with digital assets that possess variable monetary value before. This sector is a product of scientific and technological progress, and many entrepreneurs and everyday individuals are eager to get involved in it for additional profit. A registered brand in the field of virtual assets undeniably contributes to business growth and boosts users’ confidence in the security and reliability of blockchain services. The team at Barbashyn Law Firm would be happy to assist you in protecting your brand in this industry.