Trade marks and NFTs – what luxury brands have learned from “MetaBirkin”

By David Stewart

5 September 2023

World famous car manufacturer Ferrari has filed a series of Australian trade mark applications for, amongst other things, virtual goods. Here is a partial extract of one of these, featuring Ferrari’s highly recognisable horse device:

What once was a novel trade mark application is nowadays hardly unique to Ferrari. Many, many other luxury brands have been filing trade mark applications which capture the sale of non-fungible tokens.

The trigger for this flood of applications was a fiercely contested set of intellectual property proceedings in the United States. Artist Mason Rothschild was successfully sued in the U.S. District Court for the Southern District of New York by luxury brand owner Hermès for creating “MetaBirkins” non-fungible tokens. Birkin bags are a famous collectable accessory manufactured exclusively by Hermès. Mr Rothschild issued paired unique digital tokens linked to images of Birkin bags, each covered in themed fake fur. Mr Rothschild also registered and used the domain name www.metabirkin.com, and adopted social media handles such as @metabirkins. As at January 2022, Mr Rothschild had generated revenue in excess of USD1 million from his sale of “MetaBirkin” NFTs.

Other brand owners paid close attention to the dispute – a cocktail of US constitutional law, copyright law, and trade mark law involving allegations of cybersquatting and trade mark dilution. As a consequence, in various jurisdictions including Australia, we now see class 9 applications filed by most significant luxury brands, arming themselves for NFT-related disputes. (And there is also future opportunity to consider: in the proceedings against Mr Rothschild, Hermès argued any future offer of its own NFTs in the future was made problematic by Mr Rothschild’s conduct.)

Disclaimer: The information published in this article is of a general nature and should not be construed as legal advice. Whilst we aim to provide timely, relevant and accurate information, the law may change and circumstances may differ. You should not therefore act in reliance on it without first obtaining specific legal advice.