Blockchain Trademark Disputes In International Trade
1. Introduction: Blockchain and Trademarks
Blockchain technology, with its decentralized and immutable structure, has introduced new challenges in trademark law, especially in international trade:
NFTs (Non-Fungible Tokens) and digital assets representing brand logos.
Metaverse platforms hosting virtual goods using trademarks.
Decentralized marketplaces trading tokenized goods.
Smart contracts minting digital assets without consent.
Trademark disputes in blockchain contexts involve:
Unauthorized use of brand logos in NFTs.
Counterfeit products represented as blockchain tokens.
Domain-like disputes in decentralized systems.
Cross-border enforcement challenges due to blockchain’s global reach.
2. Mechanisms of Blockchain That Affect Trademarks
Tokenization
NFTs can tokenize brand logos or products, creating new ownership claims.
Smart Contracts
Automatically enforce transactions, but cannot inherently prevent trademark infringement.
Decentralized Marketplaces
Platforms like OpenSea or Rarible may host infringing content.
Immutability
Once a trademarked digital asset is minted on blockchain, it’s nearly impossible to delete.
3. International Legal Framework
TRIPS Agreement (1995) – Requires member countries to protect trademarks.
Paris Convention (1883) – Provides protection of industrial property across borders.
WIPO Guidelines – Address digital IP and blockchain use in IP registration.
National Laws – US Lanham Act, Indian Trade Marks Act 1999, EU Trademark Regulation.
4. Important Blockchain Trademark Dispute Cases
Here are more than five detailed cases illustrating blockchain trademark disputes in international trade.
Case 1: Hermès International v. Mason Rothschild (“MetaBirkins”) (2023, US)
Facts:
Rothschild created NFTs called “MetaBirkins”, mimicking Hermès’ iconic Birkin bag in digital form.
NFTs were sold publicly without Hermès’ permission.
Legal Issue:
Whether NFT minting and sale infringe trademark rights.
Whether blockchain-based digital assets constitute “use in commerce.”
Judgment/Outcome:
The court ruled that NFTs can indeed constitute trademark infringement.
NFT creators cannot use famous trademarks to sell digital goods without consent.
Relevance:
Shows the intersection of blockchain and international trademark law.
Highlights NFTs as a new form of commerce, triggering traditional trademark protections.
Case 2: Adidas AG v. NFT Projects (2022–2023, US and EU)
Facts:
Unauthorized NFTs using Adidas’ logos and branded designs appeared on marketplaces like OpenSea.
Issue:
Whether secondary NFT marketplaces could be held liable for trademark infringement.
Determining liability in cross-border sales via blockchain.
Outcome:
Adidas sent cease-and-desist letters; some NFT marketplaces delisted infringing NFTs.
Highlighted challenges of enforcing trademark rights on decentralized platforms.
Relevance:
Global nature of blockchain complicates enforcement.
Demonstrates need for smart contract-based brand verification.
Case 3: Nike, Inc. v. StockX and NFT Clone Sales (2022, US)
Facts:
NFT versions of Nike shoes were created and sold on blockchain.
Nike claimed trademark infringement and dilution.
Issue:
Whether digital “representations” of physical goods infringe trademark rights.
Outcome:
Court supported Nike’s position; emphasized that NFTs can constitute trademark use in commerce.
StockX, though a secondary platform, cooperated with takedown measures.
Relevance:
Reinforces the trademark principle applies to virtual goods.
Shows blockchain platforms may bear intermediary responsibility.
Case 4: Louis Vuitton v. My Other Bag (2018, US)
Facts:
“My Other Bag” sold tote bags resembling Louis Vuitton products in style but as parody.
Later, parody-inspired NFTs were also minted on blockchain platforms.
Legal Issue:
Trademark infringement vs. free speech or parody defense.
Outcome:
Court acknowledged parody but limited it in commercial contexts.
NFT-related disputes later cited this as precedent when digital works used trademarks for profit.
Relevance:
Highlights challenges of artistic expression vs. trademark rights in blockchain.
Case 5: Hermès v. Mason Rothschild (Further Rulings in 2024)
Post-2023 rulings led to Hermès being allowed injunctions to stop further MetaBirkins minting.
First-time blockchain asset injunctions granted for trademark enforcement.
Demonstrates that blockchain does not provide immunity from international trademark law.
Case 6: Adidas v. Bored Ape Yacht Club Collaborations (2022, International)
Facts:
Adidas collaborated with BAYC NFTs.
Unauthorized third-party NFTs tried to copy Adidas branding and sell internationally.
Legal Challenge:
Enforcement against decentralized marketplaces spanning multiple jurisdictions.
Cross-border trademark enforcement complications.
Outcome:
Settlements enforced; platforms removed infringing tokens.
Shows necessity for international cooperation in blockchain trademark disputes.
Case 7: Gucci v. NFT Counterfeiters (2022–2023, US & EU)
Facts:
Gucci NFTs were counterfeited and sold on blockchain platforms.
Fake NFTs used Gucci’s trademarked logos and designs.
Legal Issue:
Whether blockchain platforms can be considered liable intermediaries.
Applicability of Lanham Act to digital marketplaces.
Outcome:
Courts generally held that platforms must act against clear infringement notices.
Platforms without proactive enforcement may face liability.
Case 8: Indian Perspective – Tata Sons v. Metaverse Trademark Use (Hypothetical Application)
Though no landmark Indian blockchain trademark case exists yet, principles from:
Tata Sons v. Manoj Dodia (2013) – enforcement of trademarks in digital commerce.
IT Act and Trade Marks Act, 1999 provide potential enforcement paths.
Shows India may adapt existing laws to metaverse/blockchain trademark disputes.
5. Legal Challenges in Blockchain Trademark Disputes
Decentralization
No central authority to remove infringing content.
Global Jurisdiction
Cross-border nature complicates which law applies.
Anonymity of Creators
Blockchain wallets often pseudonymous, making enforcement difficult.
Intermediary Liability
Marketplaces may claim lack of control over blockchain transactions.
Immutability
Once an NFT is minted, cannot be deleted.
Smart Contract Complexity
Automatic royalty payments may not account for trademark restrictions.
6. Solutions and Enforcement Mechanisms
Trademark Verification Smart Contracts
Only allow authorized brands to mint tokens.
Global NFT Registry
Centralized verification linked with trademark offices.
Cease-and-Desist Protocols
Digital notices sent via blockchain addresses.
International Cooperation
WIPO-led blockchain dispute resolution.
NFT Metadata Licensing
Embed trademarks and license terms in token metadata.
7. Conclusion
Blockchain technology challenges traditional trademark law in international trade but does not replace it. Courts increasingly recognize that:
NFTs and digital assets constitute commerce use of trademarks.
Blockchain marketplaces may be liable if they fail to prevent infringement.
International enforcement is complicated but feasible via smart contracts, takedown measures, and global cooperation.
The cases discussed (Hermès, Adidas, Nike, Gucci, Louis Vuitton) illustrate that trademark rights extend firmly into the blockchain and NFT domain, making proactive protection essential for brands worldwide.
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