In recent years, virtual currencies (crypto assets) such as Bitcoin and Ethereum have been one of the hottest topics that attract our attention.
Traditionally, under the Trademark Act in Japan, “goods” are defined as tangible objects that are distributive through the market. Intangibles such as electricity or securities that merely represent assets are considered as not commodities under the Trademark Act.
However, when an intangible object such as gas or water is placed in a container, it will be treated as a product.
Also, since 2022, “e-publications” and “computer programs” have been added to Class 9 of the classification. This enables intangible objects to be treated as commodities when they are subject to commercial transactions.
In Japan, the Payment Services Act was revised in 2020, and the following designated services were exemplified for trademark registration applications from March 2021 onwards.
In other words, the term “crypto assets” is standardized as an official term instead of the term “virtual currency”.
Class 36 (Similar group code: 36A01)
“Buying and selling crypto assets or exchanging them for other crypto assets”
“Arranging, brokerage, and intermediation for buying and selling crypto assets or exchanging them for other crypto assets”
“Management of users’ money related to buying and selling crypto assets or exchanging with other crypto assets”
“Management of users’ money related to arranging, brokerage, and intermediation for buying and selling crypto assets or exchanging with other crypto assets”
“Crypto Assets Management for Others”
However, at present, crypto-assets themselves are not directly subject to designated goods under the Trademark Act. Some cases are registering for services related to crypto assets as described above or registering for computer programs.
Here are examples of how the three mainstream crypto assets are registered as a trademark.
“BITCOIN”, which has the largest market share for crypto assets, has already been registered as a trademark in Japan. It is registered in many classes, including Class 36. It is owned by bitFlyer, Inc., a private company that operates one of the largest crypto assets exchanges.
“ETHEREUM” has the second largest market share after “BITCOIN”, and is registered internationally.
However, “POLKADOT”, with a market capitalization of over 10 billion dollars (as of August 2022), has just filed a trademark application in Japan in March 2022 and has not yet obtained a registered trademark.
As you see, although crypto-assets have been a huge interest from investors and growing their presence in the financial industry, legal protection under the trademark law is unmatured.
I. BITCOIN: Registered Trademark in Japan No. 5484718
Trademark holder: bitFlyer Inc.
36 Savings bank services (with the issue of a debenture) [ the case where it replaces with ] it contains. And acceptance of installment savings, loans [financing] And discount of a note, domestic exchange settlement, surety services And acquisition of undertaking of a note, securities lending, and a money claim And the trusteeship of transfer, safekeeping of valuables including securities and precious metals [safe deposit services], money exchange [exchanging money], trusteeship of financial futures contracts, money, negotiable securities, a money claim, movable property and land or any fixtures thereto, superficies, or the right of lease of land, agencies for bond subscriptions, foreign exchange transactions, letter-of-Credit related services, The recommendation of trust purchase, issue of an advance payment system certificate, a gas rate medium – Or vicarious execution of collection of an electricity bill, buying and selling of securities, trading of securities index futures an d trading of securities options, trading of overseas market securities futures, buying and selling of securities, trading of securities index futures and trading of securities options, and trading of overseas market securities futures answer the door medium – Or commission of the buying-and-selling-of-securities transactions in a substitute, agencies for brokerage of entrusting agents with on-commission trading in domestic markets of securities [securities index futures and securities options], and a foreign-securities commercial scene and trading of overseas market securities futures answers the door Or to a substitute, securities underwriting, securities offering, brokerage services relating to securities subscription or offering, providing stock market information, and a commodity market Trust of the futures trading to kick, life insurance brokerage, life insurance underwriting, agencies for non-life insurance, claim adjustment for non-life insurance, non-life insurance u nderwriting, insurance premium rate computing, charitable fund raising.
II. ETHEREUM: International registration No.1444094
Trademark holder: Stiftung Ethereum (Foundation Ethereum)
9 Computer application software for blockchain-based platforms, namely, software platforms for distributed applications and software using a consensus engine incorporating blockchain technology for securing data with cryptographic information; computer software platforms for developing and building of distributed software applications and distributed computing platforms; and computer software platforms for blockchains. (11C01)
36 Cryptocurrency services, namely, providing a digital currency or digital token for use by members of an online community via a global computer network; cryptocurrency services, namely, a digital currency or digital token, incorporating cryptographic protocols, used to operate and build applications and blockchains on a decentralized computer platform and as a method of payment for goods and services. (36A01)
41 Developing, arranging, and conducting educational and business conferences; educational services, namely, developing, arranging, and conducting classes, seminars, conferences, workshops, retreats, camps, and field trips in the field of blockchains and distributed computing platforms, and distribution of training material in connection therewith. (41A01 41A03)
42 Software development services; design, development, and implementation of software for distributed computing platforms; design, development, and implementation of software in the field of blockchains; research and development of computer software; software development and product development consulting in the field of distributed computing platforms; software development and product development consulting in the field of blockchains. (42P02 42Q02 42Q99)
III. POLKADOT JP Application No. 2022-27054
March 9, 2022
Applicant: Web 3.0 Technologies Foundation
36 Cryptocurrency services, namely, providing a digital currency or digital token for use by members of an online community via a global computer network; cryptocurrency services, namely, a digital currency or digital token, incorporating cryptographic protocols, used to operate and build applications and blockchains on a decentralized computer platform and as a method of payment for goods and services. (36A01)