INTRODUCTION
The metaverse has moved from speculative jargon to a functioning commercial arena in which avatars purchase digital sneakers, corporations open virtual flagship stores, and Non-Fungible Tokens (‘NFTs’) change hands for sums that rival their physical counterparts. Brands such as Nike, Gucci and Adidas have all launched virtual product lines, and Indian conglomerates including Infosys and Mahindra & Mahindra have begun experimenting with NFT-based offerings[1]. Yet the statutory architecture of trademark law across most jurisdictions, including India’s Trade Marks Act 1999, was drafted for a marketplace of tangible goods and identifiable sellers. The result is a widening gap between how brand value is created and exploited in virtual environments and how the law recognizes and protects that value. This piece maps the principal trademark issues arising in metaverse commerce, examines the leading international disputes that have begun to answer them, and considers how Indian law is poised to respond.
WHY THE METAVERSE STRAINS CONVENTIONAL TRADEMARK DOCTRINE?
Trademark protection has historically rested on three connected ideas: a mark is used in relation to specific goods or services, that use occurs “in the course of trade” within an identifiable territory, and consumer confusion is assessed by reference to an ordinary purchaser in that market. Each of these assumptions is destabilised in the metaverse.
First, virtual goods are not neatly analogous to physical goods for classification purposes. A digital handbag is not “leather goods”; it is closer to a piece of software or a digital image, which is why trademark offices have increasingly directed such filings toward Class 9. Second, metaverse platforms are inherently borderless, so a single infringing listing on a decentralised marketplace can be viewed and purchased by consumers in every jurisdiction simultaneously, creating acute problems of applicable law and enforcement jurisdiction. Third, transactions are frequently conducted through pseudonymous wallets and avatars, which complicates the identification of an infringer and the attribution of “use in the course of trade”, a threshold requirement under most trademark statutes, including section 29 of the Trade Marks Act 1999[2].
RECURRING CATEGORIES OF INFRINGEMENT
Four patterns of dispute have emerged with sufficient regularity to be treated as distinct categories of metaverse trademark risk.
Virtual counterfeiting occurs when a third party creates and sells digital replicas of a brand’s protected product, such as a wearable skin or accessory, without authorisation. Unauthorised NFT minting involves tokenising a brand’s mark or product design as a collectable, independent of any pre-existing digital replica. Virtual storefront squatting refers to the registration of a brand name as a shop, land parcel, or username on a metaverse platform in order to divert or extort the legitimate owner, echoing the cybersquatting disputes that accompanied the early internet. Finally, avatar and endorsement misuse arises where a mark or a celebrity’s likeness is used on an avatar or in-world advertisement to imply a sponsorship that does not exist.
THE HERMÈS V ROTHSCHILD LITIGATION
The most consequential ruling to date is the dispute between the French luxury house Hermès and the artist Mason Rothschild over a series of one hundred NFTs styled “MetaBirkins”, each linked to a digital image of a fur-covered Birkin bag[3]. Hermès sued for trademark infringement, dilution and cybersquatting in relation to the domain name metabirkins.com. Rothschild resisted the claim on the footing that the works were expressive art protected by the First Amendment and governed by the Rogers test for artistic uses of a mark.
In February 2023, a New York jury rejected the First Amendment defence and found Rothschild liable on all three counts, awarding Hermès approximately $133,000 in damages[4]. The trial judge subsequently granted a permanent injunction restraining further sale or promotion of the NFTs[5]. Rothschild has appealed to the Second Circuit, and oral argument in October 2024 suggested that the appellate panel remains divided on how the “explicitly misleading” limb of the Rogers test should apply after the Supreme Court’s intervening decision in Jack Daniel’s Properties v VIP Products[6]; a final appellate ruling was still pending at the time of writing. Notwithstanding the appeal, the case is widely treated as the first authoritative confirmation that a trademark registered for physical goods can be enforced against an unauthorised digital recreation of the product, even where the recreation is framed as artistic commentary.
A parallel dispute, Nike v StockX, concerned StockX’s sale of “Vault NFTs” bearing images of Nike sneakers as a proxy for the physical shoes held in StockX’s custody. Nike alleged that the practice created a false impression of affiliation and exposed consumers to counterfeit risk, illustrating that infringement concerns in the metaverse are not confined to purely fictional or artistic digital goods but extend to NFTs used as digital receipts or ownership certificates for real products[7].
CLASSIFICATION AND REGISTRATION PRACTICE
Trademark offices have responded to the surge in metaverse-related filings by clarifying, rather than rewriting, existing classification rules. The United States Patent and Trademark Office and the European Union Intellectual Property Office have both indicated that bare terms such as “virtual goods” or “NFT” are too vague to register and must be tied to a specific digital item, for example “downloadable virtual clothing” or “digital art authenticated by non-fungible tokens”[8]. The Twelfth Edition of the Nice Classification, effective from January 2023, formally incorporated “downloadable digital files authenticated by non-fungible tokens” into Class 9, alongside blockchain-related software[9]. Applicants are additionally directed toward Class 35 for virtual retail services and Class 41 for in-world entertainment and educational offerings.
The Indian Trade Marks Registry has not issued dedicated guidance on virtual goods, but applicants have adapted by filing under the same Class 9, 35 and 41 headings used internationally, and early Indian filings by technology and conglomerate brands suggest that the Registry is prepared to accept such descriptions by analogy with existing digital-goods practice[10].
THE INDIAN LEGAL POSITION
India has no metaverse-specific trademark legislation, and commentators are broadly agreed that the Trade Marks Act 1999 will have to be stretched, through interpretation, to reach virtual conduct. Section 29(1) defines infringement by reference to use of an identical or deceptively similar mark “in the course of trade” in relation to registered goods or services[11]; whether an avatar-based sale on a decentralised platform satisfies this phrase remains untested before an Indian court. Section 11 grounds refusal of registration on likelihood of confusion, a standard that becomes harder to apply where the relevant public is a global, pseudonymous user base rather than a territorially defined consumer. Section 134 vests jurisdiction in the courts where the plaintiff carries on business, a rule built for physical presence that maps awkwardly onto platforms with no fixed location[12].
In the absence of metaverse-specific precedent, Indian courts are likely to draw on the reasoning developed in earlier internet-era disputes concerning dilution and passing off, such as the Delhi High Court’s treatment of unauthorised use of a well-known mark in Tata Sons Ltd v Greenpeace International, which recognised that reputation-based claims can succeed even absent a strict likelihood of confusion where a mark’s distinctiveness is being unfairly exploited[13]. Enforcement will nonetheless remain difficult wherever the alleged infringer operates from outside India or transacts through a pseudonymous wallet, since the Act’s remedies presuppose an identifiable, locatable defendant.
RECOMMENDATIONS
Three measures would materially improve the position of Indian brand owners. First, the Trade Marks Registry should issue formal examination guidance on the classification of virtual goods and NFTs, mirroring the specificity requirements adopted by the USPTO and EUIPO, so that applicants are not left to infer acceptable drafting from foreign practice. Second, brand owners entering virtual commerce should file defensively across Classes 9, 35 and 41 at the outset, rather than waiting for infringement to occur, given the difficulty of policing decentralised platforms after the fact. Third, given the cross-border nature of metaverse platforms, India would benefit from actively participating in international discussions, including those before WIPO, on jurisdiction and enforcement standards for virtual marketplaces, so that Indian rights-holders are not left dependent solely on foreign fora such as the Second Circuit to vindicate marks that are also registered domestically.
CONCLUSION
The MetaBirkins litigation and the accompanying classification guidance from the USPTO and EUIPO show that established trademark doctrine can be extended to virtual commerce without wholesale legislative reinvention, provided courts and registries are willing to read existing concepts of “use”, “goods” and “confusion” purposively. India’s Trade Marks Act 1999 is capable of a similar extension, but only if the Registry, the courts and brand owners act proactively rather than waiting for a domestic MetaBirkins-style dispute to force the issue. As metaverse commerce continues to grow, the jurisdictions that clarify their position earliest are likely to attract the digital investment that follows legal certainty.
Author(s) Name: Swarnadeep Das (Techno India University, Kolkata)
References:
[1] Palak Shukla, ‘Branding Beyond Reality: The Indian Trademark Horizon in the Metaverse’ (2025) 6(2) E-JAIRIPA <https://www.cnlu.ac.in/wp-content/uploads/2026/03/Branding-Beyond-Reality-The-Indian-Trademark-Horizon-in-the-Metaverse-by-Palak-Shukla.pdf> accessed 08 August 2026
[2] Trade Marks Act 1999, s 29(1)
[3] Hermès International v Rothschild [2023] No 22-cv-384 (JSR) (SDNY)
[4] Ibid; Stuart D Levi and Anita Oh, ‘Jury Finds That “MetaBirkin” NFTs Infringed Hermès’ Trademark Rights’ (Skadden Insights, 16 February 2023) <https://www.skadden.com/insights/publications/2023/02/jury-finds-that-metabirkin-nfts-infringed-hermes-trademark-rights> accessed 08 August 2026
[5] Hermès International v Rothschild [2023] No 22-cv-384 (JSR) (SDNY)
[6] Jack Daniel’s Properties Inc v VIP Products LLC [2023] 599 US 140; Jonathan Hyman and Eric Blosser, ‘MetaBirkins Update: Is It Art or a Commercial Product?’ (The Recorder, 26 February 2025) <https://www.knobbe.com/wp-content/uploads/2025/03/The-Recorder-MetaBirkins-Update.pdf> accessed 07 August 2026
[7] Nike Inc v StockX LLC [2022] No 22-cv-983 (SDNY)
[8] Draft Guidelines on Virtual Goods and Non-Fungible Tokens (European Union Intellectual Property Office 2023)
[9] Nice Classification (12th edn, World Intellectual Property Organization 2023) Class 9
[10] Shukla (n 1) 6–8
[11] Trade Marks Act 1999, s 29(1)
[12] Ibid ss 11, 134
[13] Tata Sons v Greenpeace International and Anr (2011) SCC Online Del 466