Beginning of the regulation of the meta-universe by a judge from Alicante

The court has stepped in to regulate trademark copyrights in the meta-universe, a virtual space that aspires to become a three-dimensional internet. Specifically, the Commercial Court No. 1 in Alicante, one of the first instance courts dealing with trademarks in the European Union, has taken injunctions against several companies to stop using certain marks already used by another developer.

The European Trade Marks Court, located in Alicante, has exclusive jurisdiction to hear civil actions in defense of EU marks and national and international registered marks. In this case, the Spanish company Uttopion S.L., one of the most famous developers of metasearch platforms in our country with an office in Madrid, filed a motion for injunctive relief against two Spanish companies, Global Polgar and Egonft S.L. - both based in Alcobendas (Madrid) - and Egonf Inc. with a registered office in Delaware (USA), and pursuant to an agreement with the above, for the use of the same or similar marks that have been registered.

According to a court decision published on July 13, to which EL PERIÓDICO DE ESPAÑA magazine had access, the court granted the petition of Uttopion, based in Madrid, and ordered it to stop using the marks "Utopia", "Utopia Avatars" and "Utopian" throughout the European Union, and to immediately remove the NFT Utopia Avatars collection. The court also ordered the page to be unavailable throughout the European Union.

In the context of the decision, it is noted that the meta-universe is under "construction, development and evolution", so the word itself "can have various meanings", from "three-dimensional virtual world" to "multi-dimensional internet applications based on web-2.0 rather than web-3.0 technologies".

The decision notes that Uttopion S.L., founded on April 21, 2020, is the owner of the EU registered marks 'Uttopion' and 'Uttopian' with different dates in 2022, and therefore believes that the defendants are infringing their rights by using the terms 'Utopia', 'Utopia Avatars' and 'Utopian'. In his ruling, the judge notes that the Uttopion meta universe includes two cities or quality communities, one of which, 'Musichood', has already hosted more than 200 events, including Mad Cool Talent by Vibra Mahou with more than 8,000 users or Festival Oro Viejo with a simultaneous connection of 4,700 people. The platform allows you to buy virtual plots and use them to create content or sell products online. In fact, more than one million euros of virtual plots have already been sold. It has also organized medical congresses with the University of Madrid.

With respect to Uttopian, it is pointed out that, although the registration is very recent, it serves to identify users of the Uttopion meta-universe. The Court notes that the responding party, which also has a very well-known reputation in the industry and uses the "Utopia" mark and the "Utopia Voyagers" or "Utopia Avatars" mark and has set up a website, has previously rectified some of the issues that required a direction from the competent authority and has registered other marks. However, the judge emphasizes that "it is important to secure and safeguard the rights to the marks, given the competition that may exist" at this stage of the development of the meta-universe, "the free creation and development of new markets."

The judgment, which is appealable, holds that the terms "Utopia" and "Utopian" are "graphically, phonetically, and conceptually very similar" to the previously registered mark "Uttopian," so the marks used by the defendant may "harm the function of plaintiff's marks" because they may cause "confusion to the average consumer." Therefore, the Court grants plaintiff's motion even though "some of the allegedly infringing uses appear to have been discontinued" because "even risk must be eliminated, so it must be fully satisfied, especially when it is clear that the defendant party has not discontinued use of the mark it refused to register."