It lies in the nature of the blockchain technology that the control and securing of blockchain transactions have a non-proprietary character. The decentralisation of the system shall furthermore guarantee the stability and consistency of this decentralised trust “sphere”. Starting with this characterisation, it seems at first sight to be paradox to openly think about the question, whether trademark rights could play a valuable role in the “blockchain community".
However, as commonly used terms, such as “software”, “Internet”, “social media” or “crowd funding” and the like, generically describe specific methods, technologies or systems, they are public domain and thus free for anyone, without the possibility of monopolisation through trademarks.
This said, we have to distinguish between the term (“trademark”) for a technology or method being public domain, on the one hand, and specific products or services that are developed based on this technology or method, on the other hand. But we must also be aware of the fact that there is a space between technology or method per se and the final product. As many Internet services and applications, e.g. search engines, social media platforms or media streaming, rely on specific (standardised) protocol layers, applications and cryptographic solutions have been developed likewise on the basis of existing blockchain technologies and platforms. Keeping in mind that trademark rights provide an instrument for legal protection of investment, there is no reason why a developer and creator of a specific blockchain solution should be forced to tolerate that a third party is using the same or a confusingly similar name (trademark) for its product. If this would be the case, the third party could profit from the quality reputation and goodwill built and established by the “first mover”. At first sight it is obvious that trademark protection can be obtained for blockchain based products (goods or services) by opting for the accurate class within the Nice classification system – for example: software (class 9), data compilation (class 35), financial transactions (class 36), design and development of a new technology for others (class 42), software as a service (SaaS) (class 42) or licensing of technology (class 45).
Nevertheless, we may also think about alternative options for trademark protection for blockchain brands which are more agreeable with the “open access”-spirit of the blockchain community. Given that the trademark owner wants to have his technology and brand used by as many users as possible, it could make sense to revitalise the institute of a guarantee mark (certification mark or label). Likewise, such certification mark could ensure the protection of a label for standards describing the functions and events that a token contract has to implement (eg. ERC20). A certification mark is used by several users under the supervision of the proprietor of the mark, which serves to guarantee characteristics common to goods or services provided by such users. As a specific trademark type the guarantee mark is acknowledged by the European and the Swiss Legislation (Art. 83 EU Trademark Regulation and Art. 21 Swiss Trademark Act).
We believe that registration and protection of a guarantee mark (label) would combine the interest in a wide market penetration of a technology, on the one hand, with the interest in a good and fair control of reputation and goodwill of blockchain driven products, on the other hand.
We are pleased to publish another guest blogpost, by PD Dr. Gregor Wild, Trademark Attorney at Rentsch Partner AG.
The cooperation between FRORIEP and RENTSCH PARTNER stands for agility, innovation and an interdisciplinary powerhouse in the field of technology and commercial law.
If you liked this article, you might also be interested in reading more from the same series:
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Initial Token Offerings (ITO) in Swiss Taxation: latest Tax Practice, by Dr. Marcel R. Jung
Practical Aspects of Initial Token Offerings (Part 2), by Dr. Catrina Luchsinger Gähwiler and Ronald Kogens
Practical Aspects of Initial Token Offerings (Part 1), by Dr. Catrina Luchsinger Gähwiler and Ronald Kogens
How Crypto-Tokens qualify under Swiss Law: A comprehensive Framework, by Ronald Kogens and Dr. Catrina Luchsinger Gähwiler
How Crypto-Tokens qualify under Swiss Law: a comprehensive Framework, by Ronald Kogens and Dr. Catrina Luchsinger Gähwiler
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