Brand protection and enforcement in the Metaverse


Produced in partnership with D茅sir茅e Fields of Pinsent Masons and Katy Bourne of Pinsent Masons
Practice notes

Brand protection and enforcement in the Metaverse


Produced in partnership with D茅sir茅e Fields of Pinsent Masons and Katy Bourne of Pinsent Masons

Practice notes
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This Practice Note sets out the considerations that right holders should take into account when protecting and enforcing their brands in the Metaverse. It covers the points to consider when planning the scope of trade mark or design protection, including identifying and plugging gaps in protection. It also sets out issues to consider when licensing a brand for use in the Metaverse. When it comes to enforcement, this Practice Note deals with monitoring potential infringements, identifying infringers, potential causes of action, jurisdiction issues, remedies and general enforcement challenges. It concludes with some practical tips to assist right holders when protecting and enforcing their brands.

What is the Metaverse?

There is no single definition of the 鈥楳etaverse鈥, however, it is generally accepted that the Metaverse encompasses immersive environments, often utilising augmented or virtual reality.

The immersive environments which make up the Metaverse also have their own fully functioning economy.

There are broadly two schools of thought on how the Metaverse will operate:

  1. 鈥

    decentralised: many decentralised Metaverse

Désirée Fields
Désirée Fields

Legal Director, Pinsent Masons

D茅sir茅e Fields is a Legal Director in the London office of international law firm Pinsent Masons, specialising in intellectual property. Her practice focuses on worldwide trade mark and design portfolio management, international prosecution and clearance, enforcement, exploitation and commercialisation of trade marks and designs. She has been involved in complex multi-jurisdictional trade mark oppositions and litigation and has experience with coordinating trade mark projects on a global basis. D茅sir茅e has worked with clients across a diverse range of sectors, including luxury and consumer brands, food and beverages, media, technology and communications, sports, entertainment, hospitality, and leisure. Her particular focus on the tennis industry is a result of her lifelong interest in the sport in which she has become widely regarded for her extensive knowledge and insight. D茅sir茅e has authored numerous articles for various intellectual property and other legal publications and has been consistently recognised by leading legal directories and publications. She has been named as a top trade mark professional for trade mark prosecution and strategy by World Trademark Review鈥檚 WTR 1000 (2017-2022) and recommended for trade mark and brand protection work in the Legal 500 (2018-2022). D茅sir茅e鈥檚 outstanding contributions to The Trademark Reporter (TMR) Committee of the International Trade Mark Association (INTA) since 2018 have resulted in her elevation to Senior Editor for 2023.聽聽

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Katy Bourne
Katy Bourne

Senior Associate, Pinsent Masons

Intellectual Property lawyer advising clients on the protection, enforcement and defence of their IP rights worldwide.

Katy is in the Brands and Creative Rights team at Pinsent Masons. She advises clients in a variety of sectors, across the full range of IP rights and at all stages in a brand鈥檚 journey. Katy also provides advertising copy clearance services and advises on issues such as influencer advertising.

Katy has a particular interest in the manufacturing sector and is the Chair of the Pinsent Masons Diversified Industrial Evolve Committee. She is an avid contributor to Pinsent Masons鈥 Future of Mobility campaign, having previously undertaken an eight-month secondment to Jaguar Land Rover. She also takes a keen interest in the metaverse, NFTs and the risks and rewards to brands in utilising social media.
Having completed a Postgraduate Diploma in Intellectual Property Law and Practice in 2018, Katy鈥檚 pass was amongst the first 15%. Katy鈥檚 technical ability has been recognised in the Legal500 2021 and 2022 rankings where she is a 鈥淩ising Star鈥 and is 鈥渞ecommended鈥. She was also shortlisted as the Future Face of Legal in 2020 and 2021 by the Greater Birmingham Chambers of Commerce Future Faces Committee.

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Jurisdiction(s):
United Kingdom
Related legal acts:

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