Metaverse Elegance: Protecting Deceased Luxury Brand Trade Dress in India’s Digital Economy

Abstract

The rise of non-fungible tokens (NFTs) and virtual marketplaces has created unprecedented difficulties for protecting luxury brand trade dress in India. This article examines whether the Trade Marks Act, 1999 can cover virtual goods that replicate a distinctive trade dress, and whether virtual use amounts to “use in the course of trade” for infringement purposes. Using a doctrinal legal research approach, the paper reviews Indian statutory provisions and judicial precedents, including Hermès v. Rothschild (USA), and considers emerging global frameworks.

The central finding is that, although Indian law does not explicitly address virtual goods, its flexible statutory structure — covering trade dress under Section 2(m) and the common law doctrine of passing off — can accommodate metaverse-related disputes, provided courts interpret “goods” and “use in commerce” broadly. Significant gaps remain, however. Classification uncertainty and enforcement challenges in decentralised spaces are critical and will likely require legislative intervention.

Keywords: Trade Dress, NFTs, Metaverse, Trademark Infringement, Indian IPR, Trade Marks Act 1999, Passing Off, Virtual Goods

1. Introduction

The metaverse has emerged as a commercial frontier where luxury brands face unplanned threats to their carefully cultivated trade dress — the total image and overall look of a product, including its shape, colour, packaging, and design combinations. When digital artists create and sell NFTs depicting virtual handbags that closely resemble Hermès’s well-known Birkin design, fundamental questions arise about how far trademark law can travel beyond national borders, particularly in India. The Hermès v. Rothschild (“MetaBirkins”) case, in which a U.S. jury awarded $133,000 in damages for trademark infringement through virtual NFTs, suggests that digital replicas can be commercially harmful in ways that closely mirror physical counterfeits.

This article addresses a central research question: how does Indian trademark law — the Trade Marks Act, 1999 — apply to NFTs and virtual goods that mimic luxury brand trade dress, and is “use in the course of trade” satisfied when the use is virtual or online? The discussion proceeds in six parts. Part II sets out India’s legal framework for protecting trade dress and the classification problem for virtual goods. Part III examines the “use in commerce” threshold and infringement standards. Part IV reviews relevant case law, including Hermès and emerging strands of Indian cyber jurisprudence. Part V offers critical commentary on doctrinal gaps and proposes policy responses. Part VI concludes with forward-looking suggestions for legal reform.

2. Background and Conceptual Framework

Trade Dress Protection under the Trade Marks Act, 1999

Unlike the United States, which explicitly recognises trade dress under Section 43(a) of the Lanham Act, India has no standalone provision for trade dress. The concept is instead accommodated through broader statutory definitions. Section 2(m) of the Trade Marks Act, 1999 defines “mark” to include a “device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.”¹ Section 2(q) gives a wide meaning to “package,” and Section 2(zb) describes a “trade mark” as a mark capable of being represented graphically and capable of distinguishing goods or services.²

Because of this structure, trade dress protection can extend to distinctive product configurations. Recently, the Delhi High Court in Eastern Book Company v. Rupa Publications (2025)³ restrained a defendant from using a red-black colour pairing and a particular layout for a pocket edition of the Constitution. The court reasoned that a distinctive colour combination, when consistently used over time, can create customer recognition and goodwill. It relied on Colgate Palmolive v. Anchor Health in accepting that trade dress covers colour combination, layout, container shape, and overall design.

The Classification Problem for Virtual Goods

The most pressing challenge under Indian law is the absence of a consistent classification scheme for virtual goods. The Nice Classification,⁴ which India has adopted, was originally drafted for tangible goods, and the fit is imperfect. Virtual goods such as NFT artwork, avatar clothing, and digital luxury items sit awkwardly within the existing classes. In other jurisdictions, EUIPO has clarified that virtual goods generally fall under Class 9 (downloadable digital files), while related metaverse services fall under Classes 35, 41, and 42. India has issued no equivalent guidance, leaving trademark applicants with real uncertainty.

If a luxury brand registers its trademark only under Class 18 for physical handbags, that registration might not automatically cover a digital version of the same handbag sold as an NFT. This creates a gap through which brands can be exposed to “pixel piracy” — digital counterfeiting that exploits classification loopholes.

Common Law Passing Off

For unregistered trade dress — which describes most product configurations — Indian law provides a remedy primarily through passing off actions under Section 27(2) of the Trade Marks Act,⁵ which preserves common law remedies. To succeed, a plaintiff must show: (1) goodwill or reputation associated with the trade dress; (2) misrepresentation by the defendant creating a likelihood of confusion; and (3) actual or potential damage to the plaintiff’s goodwill. This three-part test, drawn from Erven Warnink v. Townend,⁶ is flexible enough to address virtual misrepresentation, provided courts accept that digital goods can generate consumer confusion.

3. Legal Analysis

Does Virtual Use Constitute “Use in the Course of Trade”?

Section 2(2) of the Trade Marks Act defines “use” in relation to a mark, though that definition was not drafted with digital contexts in mind. The central doctrinal question is whether minting an NFT depicting a luxury handbag, marketing it on a platform such as OpenSea, and selling it for cryptocurrency amounts to “use in the course of trade.”

This article takes the view that it should. Commercial intent is clear when NFTs are listed for sale at market prices in a typical commercial context. In the Hermès decision, the court rejected Rothschild’s artistic-expression defence, holding that the MetaBirkins NFTs were “commercial goods” because they were sold for profit, even though they existed only as digital images.⁷ The same reasoning should apply under Indian law. Section 2(1)(zb) defines a “trade mark” as a mark used in relation to “goods,” and Section 2(7) of the Sale of Goods Act,⁸ 1930 defines “goods” as “every kind of movable property.” That wording was drafted with physical objects in mind, but Indian courts could read “movable property” more expansively to cover blockchain-authenticated virtual assets. Digital tokens can be transferred, owned, and exclusively possessed, so they are not merely faceless files.

A counter-argument nonetheless exists. The U.S. Supreme Court in Dastar Corp. v. Twentieth Century Fox appeared to limit “goods” to physical products, and Indian courts might be tempted to follow that restraint. However, the technological context has moved on: NFTs carry unique identifiers on a blockchain, making them more distinguishable from ordinary digital files and, in that sense, not truly comparable.⁹

Infringement Standards for Virtual Trade Dress

Traditional infringement analysis under Section 29 of the Trade Marks Act hinges on likelihood of confusion.¹⁰ In a virtual marketplace, however, how does “confusion” operate? In brick-and-mortar retail, shoppers typically examine goods, packaging, and labels closely. NFT buyers, by contrast, rely mainly on the digital image, the platform description, and whatever metadata is displayed. The “point of sale” is effectively a screen rather than a shop front. This shift means the usual visual, phonetic, and conceptual similarity tests need to be recalibrated for digital browsing conditions.

As for dilution of famous marks, the analysis under Section 29(4), for registered marks with a reputation, is more straightforward. Unauthorised use of a luxury brand’s trade dress in virtual space can blur distinctiveness or damage reputation even absent a likelihood of confusion.¹¹ The Hermès case endorsed the view that dilution can occur when low-quality or unauthorised digital products weaken a brand’s exclusive association with luxury — an effect that may be more pronounced online than offline.

Intermediary Liability under Indian Law

NFT marketplaces such as OpenSea and Rarible operate as intermediaries under the Information Technology Act, 2000. Section 79 provides safe harbour where the intermediary does not “initiate the transmission” or “modify the information.” The Delhi High Court in MySpace Inc. v. Super Cassettes (2011)¹² held that intermediaries lose this protection once they acquire “actual knowledge” of infringing content and fail to remove it promptly. Metaverse platforms that curate, promote, or take a commission from NFT sales may accordingly be viewed as having such “actual knowledge,” exposing them to liability.

4. Case Law Discussion

Hermès Int’l v. Rothschild (S.D.N.Y. 2023) — the MetaBirkins case. Mason Rothschild created 100 “MetaBirkins” NFTs depicting fur-draped Birkin-style handbags and earned approximately $1.2 million from their sale. Hermès sued for trademark infringement and dilution; Rothschild argued the project constituted expressive art rather than ordinary commerce. The U.S. District Court rejected that defence, denying his motion to dismiss and treating the NFTs as commercial goods. A jury unanimously found infringement and awarded $133,000 in damages plus injunctive relief. The court held that even pixelated replicas can confuse consumers by evoking the identity of a luxury brand. For India, the takeaway is that virtual goods can meet the commercial-use requirement, and “artistic expression” is not a universal shield when digital works are sold for profit in a direct, commercial manner.¹³

Juventus FC v. Blockeras (Italy, 2024): often described as Europe’s first trademark infringement case tied to NFTs. The Italian court held that trademark protection in the non-digital world may extend into digital territory, provided the trademark owner can show actual use of the mark. This “digital extension” principle is significant for India: it suggests that a trademark registered for physical goods might also cover virtual versions, although obtaining explicit registration in Class 9 remains the safer approach.¹⁴

Eastern Book Company v. Rupa Publications (Delhi HC 2025):¹⁵ although this dispute concerned physical books, its trade dress analysis is readily transferable. The Delhi High Court restrained the defendant from using a red-black colour combination, gold embossing, and a specific layout for a pocket Constitution edition. The court reasoned that trade dress — including colour combination, layout, container shape, and overall design — enjoys strong protection against imitation because it identifies the source of goods. These branding cues point to origin, not merely aesthetics, and the same logic should apply to virtual trade dress, including colour palettes, the shapes of virtual handbags, and distinctive design elements rendered in 3D environments.

5. Critical Analysis and Findings

Three significant doctrinal gaps emerge from this analysis.

First, classification uncertainty is the most immediate issue. The Indian Trade Marks Registry has issued no clear guidance on whether virtual goods should be treated under Class 9 (downloadable digital files) or placed in an entirely new class. This ambiguity disadvantages brand owners, who cannot reliably secure protection for virtual versions of their products. By comparison, the EU, the USPTO, and WIPO have already issued guidance, and India lags behind.¹⁶

Second, jurisdictional enforcement in decentralised markets poses a substantial problem. Blockchain transactions occur on globally distributed ledgers, so an Indian court’s injunction cannot technically remove an infringing NFT from the Ethereum blockchain. Effective enforcement requires cooperation from marketplace platforms that often span multiple jurisdictions. NITI Aayog has emphasised the need for “techno-legal solutions” to digital challenges, but practical mechanisms remain underdeveloped.¹⁷

Third, the physical-digital divide remains under-theorised within confusion analysis. The traditional “point of sale” doctrine assumes a physical setting in which consumers can inspect a product. In NFT marketplaces, consumers instead rely on digital images, metadata, and platform reputation. Indian courts have not clarified what “point of sale” means for virtual goods — whether it is the moment of digital browsing, the blockchain transaction itself, or both. This leaves the standard unpredictable, particularly once infringement litigation arises.¹⁸

Conclusion

This article has examined how Indian trademark law applies to NFTs and virtual items that mimic luxury brand trade dress. Its central finding is that the Trade Marks Act, 1999 — through its broad definitions of “mark” and “package,” together with the common law remedy of passing off — provides sufficient room to address metaverse-related disputes. The Hermès v. Rothschild precedent suggests that virtual use qualifies as commercial use, and Indian courts would likely reach the same conclusion, given the evident commercial realities of NFT marketplaces.

Important gaps remain, however, including classification uncertainty, jurisdictional enforcement challenges, and the need for a “digital point of sale” confusion standard. As a way forward, this article recommends: (1) that the Indian Trade Marks Registry publish formal guidance placing virtual goods in Class 9, consistent with EUIPO practice; (2) a legislative amendment to Section 2(2) of the Trade Marks Act explicitly covering digital use of marks; (3) development of blockchain-based trademark verification mechanisms as an assurance layer; and (4) establishment of international cooperation frameworks for cross-jurisdictional enforcement. Luxury brands should also register trademarks in Class 9 covering virtual goods and NFT-authenticated assets to future-proof their protection.

Endnote(S):

1. Trade Marks Act, 1999, No. 47 of 1999, § 2(1)(m) (India) (“mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof”).
2. Trade Marks Act, 1999, § 2(1)(zb) (India) (“trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours”).
3. Eastern Book Company v. Rupa Publications Pvt. Ltd., 2025 SCC OnLine Del (India); Lucy Rana & Huda Jafri, Protecting Iconic Trademarks: A Case of Trade Dress Protection in Legal Publication, Chambers and Partners (Nov. 26, 2025) (Delhi High Court restrained Rupa Publications from manufacturing, selling and publishing its red and black “coat-pocket” edition of the Constitution of India, citing similarities in trade dress that could mislead consumers).
4. World Intellectual Property Organization, Information Notice: 12th Edition of the Nice Classification (Oct. 14, 2022); Trilegal, Intellectual Property Milestones, Issue 6 (noting that the 12th edition of the Nice Classification includes specific descriptions for virtual goods and services, including “downloadable digital files authenticated by non-fungible tokens” in Class 9, applicable from January 1, 2023 to all trademark applications received by domestic trademark offices that have adopted the Nice Classification, including India).
5. Trade Marks Act, 1999, § 27(2) (India) (“Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.”).
6. Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd., [1979] A.C. 731 (H.L.) (establishing the classical trinity of passing off: goodwill, misrepresentation, and damage).
7. Hermès Int’l v. Rothschild, 603 F. Supp. 3d at 103-04 (S.D.N.Y. 2022) (rejecting Rothschild’s motion to dismiss and finding that the use of NFTs to authenticate the images did not change the application of the Rogers test, and that selling digital images of handbags could constitute artistic expression, though the commercial sale meant they were not mere commodities).
8. Sale of Goods Act, 1930, § 2(7) (India) (“goods means every kind of movable property other than actionable claims and money; and includes stock and shares, growing crops, grass, and things attached to or forming part of the land which are agreed to be severed before sale or under the contract of sale”).
9. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 36-37 (2003) (holding that the Lanham Act’s definition of “goods” does not extend to communicative products where the trademark’s significance lies in the content of the creative work rather than the source of the physical product).
10. Trade Marks Act, 1999, § 29 (India) (defining infringement of registered trademarks).
11. Information Technology Act, 2000, § 79 (India) (exemption from liability of intermediary in certain cases).
12. MySpace Inc. v. Super Cassettes Industries Ltd., 2011 SCC OnLine Del 4776 (holding that intermediaries lose safe harbour protection upon receiving “actual knowledge” of infringing content if they fail to remove it promptly).
13. Hermès Int’l v. Rothschild, 603 F. Supp. 3d 98 (S.D.N.Y. 2022); Hermès Int’l v. Rothschild, 2023 WL 4145518 (S.D.N.Y. June 23, 2023).
14. Ankita Panwar, Trademarking in the Metaverse: Challenges and Legal Framework, 5(1) Indian J. Legal Rev. 1432, 1434-35 (2025) (citing the Hermès court’s holding that even pixelated replicas can confuse consumers by evoking the identity of a luxury brand).
15. Juventus FC v. Blockeras, Tribunale di Torino (Italy, 2024) (holding that trademark protection in the non-digital space may be sufficient to grant protection in the digital space if the trademark owner can prove actual use of the mark).
16. NITI Aayog, Blockchain: The India Strategy, Part II (2020) (emphasising the need for “techno-legal solutions” to address digital challenges, including intellectual property enforcement in decentralised systems).
17. Noting that the Indian Trade Marks Registry has not issued guidance on whether virtual goods fall under Class 9, and that this classification uncertainty undermines trademark protection in the metaverse.
18. Observing that the question of whether digital goods misrepresent a trademark depends on how they are used in the virtual world and whether consumers might mistakenly associate them with the original brand, and that the traditional “point of sale” doctrine requires recalibration for digital browsing environments.

Reference(S):

Statutes and Regulations

• Trade Marks Act, 1999 (No. 47 of 1999), §§ 2(1)(zb), 2(2), 2(m), 2(q), 27(2), 29
• Information Technology Act, 2000 (No. 21 of 2000), § 79
• Sale of Goods Act, 1930 (No. 3 of 1930), § 2(7)
• General Clauses Act, 1897 (No. 10 of 1897), §§ 3(26), 3(36)

Case Law

• Hermès Int’l v. Rothschild, 603 F. Supp. 3d 98 (S.D.N.Y. 2022), aff’d, 678 F. Supp. 3d 475 (S.D.N.Y. 2023)
• Eastern Book Company v. Rupa Publications Pvt. Ltd., 2025 SCC OnLine Del (India)
• Colgate Palmolive Company & Another v. Anchor Health and Beauty Care Pvt. Ltd. (India)
• Juventus FC v. Blockeras (Italy, 2024)
• MySpace Inc. v. Super Cassettes Industries Ltd., 2011 SCC OnLine Del 4776
• R.G. Anand v. Delux Films, (1978) 4 SCC 118 (India)

Secondary Sources

• Khurana & Khurana, Pixel Marks & Parallel Markets: Rethinking India’s Trademark Regime for Virtual Goods After Hermès v. Rothschild (Dec. 2025)
• Mikhail Behl, Trade Dress Protection in India, Law.asia (Apr. 2025)
• Udiksha Rana & Amanpriya Singh, The Conflict of Laws and Cross-Border Enforcement of India’s IP Rights in Online Fantasy Games, 1(1) Journal on Development of IPR (2025)
• Ujjwal Dipankar Gautam & Mantasha Fatima, Manoeuvring the Convergence of NFTs and Trademark Protection, Journal of Intellectual Property Rights (2025)
• NLUA Journal of Intellectual Property Rights, Trade Dress Protection in India, Vol. 1 Iss. 1
• Ankita Panwar, Trademarking in the Metaverse: Challenges and Legal Framework, 5(1) Indian Journal of Legal Review 1432 (2025)
• Anshuman Singh, Trademark Protection of Virtual Goods and Services in the Metaverse, 9(2) IJLMH 1869 (2026)