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Corporate digitalization: trademarks and digital branding

It is undeniable that the recent pandemic, besides causing millions of deaths worldwide, has created opportunities for companies in terms of development and transformation of traditional assets, accelerating digitalization processes and transforming corporate assets, including human resources and related personnel management processes (e.g., smart working), new sales channels (e-commerce), and intangible assets such as trademarks, patents, and industrial designs, which have evolved from traditional IP titles into digital IP assets.

What is a Trademark?

Traditionally, a trademark is a distinctive sign that can consist of: “words, designs, letters, numbers, colors, the shape of products or their packaging, sounds” (Art. 7 c.p.i.), registered for specific products and services listed in the Nice Classification.

The traditional functions of a trademark - distinctive function (identifying products/services) and origin function (associating products/services with a company) - are now complemented by a communication function. This conveys information about the origin, quality, and guarantees of goods/services, helping distinguish companies in the market.

The Digital Era and Digital Branding

In the digital era, the communication function has become predominant, thanks to mass use of digital channels, the internet boom, broadband (4G/5G), virtual reality, and AI. These tools have greatly expanded the target audience and the potential of trademarks.

The corporate trademark evolves into a digital brand, combining:

Trademark + Marketing = Internet + Virtual Reality / AI

Main Digital Branding Strategies

  1. Trademark Registration:
    Conduct searches for prior similar marks and register the sign nationally (UIBM), at the EU level (EUIPO), or internationally (WIPO), including traditional classes as well as new digital/virtual products and services.
  2. Domain Name Registration:
    Create innovative websites that integrate with virtual reality and AI.
  3. Keyword Advertising:
    Purchase keywords for search engines, including terms such as “virtual” and “digital.”
  4. SEO – Search Engine Optimization:
    Optimize website ranking on search engines.
  5. Social Media:
    Integrate digital brand presence across social networks.

Updating Existing Trademarks

It is important to update existing trademark registrations in light of the new Nice Classification (effective 01.01.2023), which now includes digital products and services previously not covered. Examples include virtual items, avatars, connected software, and more.

Highlights from the updated classification:

  • Class 9: Downloadable virtual items (e.g., clothing, shoes, hats, bags, sports equipment, art, toys) for online or virtual worlds; interactive gaming software; social networking software; multimedia streaming access; software for creating digital designs, avatars, overlays, and skins for virtual environments.
  • Class 35: Provision of interactive websites and software applications for virtual reality games.
  • Class 41: Entertainment services, including non-downloadable virtual digital items, avatars, overlays, and skins; online virtual reality and interactive games; virtual environments for recreation or social entertainment; streaming and live events; organization and hosting of virtual shows and social entertainment events.
  • Class 42: Non-downloadable software for creating, producing, and modifying digital designs, avatars, overlays, and skins for online and virtual environments.

Conclusion

It is essential for companies to review their national, EU, and international trademark registrations to ensure they are up to date with modern digital products and services and aligned with the new Nice Classification.

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