Authored By: Salma Boudadne
Assas Université
Introduction
In 2021, a French company began marketing, alongside its physical handbags, a non-fungible token (“NFT”) reproducing one of these designs on the OpenSea platform. The buyer received nothing but a certificate recorded on a blockchain, with no tangible object attached. Yet four years later, the Paris Judicial Court held that this conduct amounted to trade mark and copyright infringement in the same way as the sale of a counterfeit bag in a physical market[1].
French trade mark law rests historically on the principle of speciality: a mark is protected only for the goods and services for which it was registered, according to the Nice Classification[2]. This framework was designed for a world of physical goods. The rise of the metaverse and NFTs disrupts this logic: distinctive signs are now being used on purely digital objects whose classification remains uncertain.
This article argues that although French courts have begun extending trade mark protection to virtual reproductions, the underlying legal framework — built around speciality and a classification system designed for tangible goods — remains structurally inadequate. The decisions handed down so far resolve only the most blatant cases of reproduction and leave the uncertainty entirely intact for less obvious virtual uses.
Section II sets out the applicable legal framework. Section III analyses the relevant French and American case law. Section IV offers a critical evaluation that refutes the arguments according to which the current law would already suffice. Section V compares the European and American approaches, before a conclusion proposing avenues for reform.
The Applicable Legal Framework
The principle of speciality is the cornerstone of trade mark law. A mark registered for leather goods (Class 18) does not, in principle, automatically protect its holder against the use of the same sign on a digital product, unless the holder can show either a registration covering the relevant classes, or a likelihood of confusion, or unfair advantage taken of the reputation of the mark[3].
Faced with a surge of Web3-related filings, the European Union Intellectual Property Office (EUIPO) published guidance in 2022 clarifying that virtual goods and NFTs fall within Class 9 of the Nice Classification, the terms “virtual goods” and “NFT” alone being considered too imprecise to be accepted[4]. The French Intellectual Property Office (INPI) aligned itself with this position as early as June 2022, recommending precise wordings such as “downloadable digital files authenticated by non-fungible tokens”[5].
This administrative clarification, however, only solves part of the problem: it guides future filings but says nothing about the fate of marks registered before the emergence of the metaverse, for exclusively physical goods. Yet this is precisely the situation that characterises the bulk of the litigation observed to date, including the Hermès v Blao&Co case, where Hermès held no specific Class 9 registration but instead relied on its three-dimensional trade mark over the bag clasp, registered in 2003 for physical goods[6].
III. Analysis of the Case Law
Hermès v Blao&Co (France)
In this case, the company Blao&Co marketed, under the brand “NDG”, bags named “Paisley Jane” reproducing the trapezoidal shape, side gussets and metal clasp characteristic of the Kelly and Birkin bags, together with an NFT depicting one of these bags on OpenSea[7]. The court found copyright infringement, holding the Kelly and Birkin designs to be original, and trade mark infringement of the three-dimensional clasp mark, finding that its identical or similar reproduction created a likelihood of confusion[8]. Two defences were expressly rejected: the argument of the “common stock of leather-goods design”, dismissed because Hermès demonstrated distinctive features of its own, and the argument that the NFT targeted an exclusively international audience, held irrelevant given that the defendant company was French and operated from France[9]. Blao&Co was ordered to pay EUR 220,000 in damages.
A closer look at the reasoning shows that the court never had to rule on the classification of virtual goods as such: it simply found that the NFT reproduced an image that was itself infringing, treating the digital medium as an additional vector of an infringement already established on the physical plane. Whether an ordinary, non-famous mark, lacking any three-dimensional equivalent so readily transposable into an image, could be enforced against a purely virtual use remains entirely open.
Hermès International v Rothschild (United States)
Two years earlier, a federal jury in New York had found the artist Mason Rothschild liable for selling “MetaBirkins” NFTs, depicting Birkin bags covered in fur, holding that this use constituted trade mark infringement, dilution and cybersquatting rather than artistic expression protected by the First Amendment[10]. The jury found that Rothschild used the “Birkin” sign as a source identifier rather than as an element of a transformative work, which excluded the constitutional protection afforded by the so-called “Rogers” test[11].
The comparison between the two cases is instructive: the French and American courts reached the same finding of infringement through distinct doctrinal routes — respectively, classical trade mark and copyright infringement law in France, and a constitutional balancing test between free speech and trade mark rights in the United States. This convergence in outcome, however, conceals a shared reality: in both cases, the defendant’s conduct was particularly egregious (near-identical visual reproduction, registration of a domain name mirroring the mark), which allowed the courts to apply existing doctrines without having to formally adapt them to the virtual medium.
Critical Evaluation: The Limits of Adaptation Through Case Law Alone
These two decisions might suggest that existing law already suffices to address trade mark infringement in the metaverse. This reading must be challenged on three grounds.
The success of trade mark holders in extreme cases does not prove the robustness of the system
It might be argued that, since Hermès prevailed in both cases without any new rule being necessary, the system works. This argument does not withstand scrutiny: in both cases, the reproduction was near-identical and the defendant’s bad faith was manifest (the clasp reproduced identically in France, the shape and name directly derived from the protected sign in the United States). Neither court had to rule on a more ambiguous case — that of a referential or transformative use, or of a non-famous mark confronted with a good-faith third party operating exclusively in an unregistered virtual environment. The classic likelihood-of-confusion test presupposes an identity or similarity of “distribution channels” and “relevant public”; yet nothing to date indicates how this test applies where one product is physical and the other purely digital, tradeable on marketplaces distinct from those of physical goods.
The EUIPO and INPI classification guidelines do not cover pre-existing marks
It might also be argued that the EUIPO and INPI guidance on Class 9 has already resolved the difficulty: trade mark holders need only file the appropriate specifications. This argument must be rejected for two reasons. First, it concerns only future filings; it offers no solution for marks registered before the emergence of NFTs, which make up the vast majority of current litigation — Hermès itself relied only on a three-dimensional mark from 2003. Second, the route of the well-known mark, provided for under Article L713-5 of the French Intellectual Property Code, is open only to signs enjoying exceptional renown: an ordinary, non-famous mark today has no established route to oppose a purely virtual use in the absence of a Class 9 registration. The problem is therefore not solved for the vast majority of trade mark holders, but merely bypassed for the most famous luxury marks.
Rejecting the “international audience” argument does not settle the question of territoriality
Finally, it might be argued that territoriality poses no real difficulty, since the Paris court dismissed the argument that the NFT targeted an exclusively international audience. This rebuttal must nonetheless be qualified: the court was able to dismiss this argument precisely because Blao&Co was a French company operating from France, which made the application of French law incontestable. The question would look entirely different if the seller were established outside France, on a decentralised platform such as OpenSea, whose blockchain nodes are attached to no specific territory. The targeting criteria conventionally applied to online commerce — website language, currency, delivery arrangements — were designed for conventional websites and do not readily transpose to a token recorded on a worldwide ledger and accessible indifferently from any country.
These three rebuttals converge on a single conclusion: the Hermès decisions do not amount to a coherent adaptation of trade mark law to the metaverse, but rather to ad hoc extensions of existing doctrines to particularly egregious facts. Such case law, however welcome for holders of famous marks, provides no legal certainty for economic actors confronted with less extreme situations.
Comparative Perspectives
The European Union has favoured early administrative clarification, through the EUIPO’s classification guidelines, complemented by the INPI’s aligned position[12]. This approach offers the advantage of predictability for new filings but is not accompanied by any reform of infringement law itself.
The United States, by contrast, has not adopted equivalent guidelines but has developed, through case law, a specific constitutional test — the Rogers test — allowing courts to balance artistic free expression against trade mark protection, an analytical layer absent from French law[13]. French law would benefit from drawing on this approach by developing, whether through doctrine or legislation, explicit criteria for assessing the similarity of goods and the relevant public where one of the goods compared is virtual.
Conclusion
French trade mark law, built around the principle of speciality and a classification designed for physical goods, has so far addressed disputes relating to the metaverse and NFTs only in cases of near-identical reproduction and manifest bad faith. This article has shown that this judicial success, however clear-cut, resolves neither the fate of ordinary, non-famous marks, nor the question of territoriality vis-à-vis decentralised platforms, nor that of virtual uses less obvious than outright copying.
It is therefore proposed, on the one hand, that the legislature or the INPI clarify the conditions under which a mark registered for physical goods may be enforced against an unregistered virtual use falling outside Class 9, and, on the other hand, that French courts develop, along the lines of the American Rogers test, an explicit framework for assessing the similarity of goods and the relevant public where the comparison is between a physical good and a virtual one. Absent such clarification, trade mark protection in the metaverse will continue to depend not on the robustness of the legal framework, but solely on how obvious the infringement happens to be.
Reference(S):
Table of Cases
Hermès International and Hermès Sellier v Blao&Co, Tribunal judiciaire de Paris (3rd ch, 2nd sect), 7 February 2025, No RG 22/09210.
Hermès International v Rothschild, No 1:22-cv-00384 (SDNY, verdict 8 February 2023; permanent injunction 23 June 2023).
Table of Legislation
Code de la propriété intellectuelle, art L711-1, L713-1, L713-2, L713-3, L713-5.
Bibliography
Dreyfus, ‘Protection des sacs iconiques Kelly et Birkin: décision du Tribunal judiciaire de Paris du 7 février 2025’ (Dreyfus, 13 March 2025) <www.dreyfus.fr> accessed 6 September 2026.
EUIPO, Communication on Trade Marks and Non-Fungible Tokens (EUIPO, June 2022).
INPI PIBD, ‘La désignation des produits et services dans le cadre des dépôts de marques relatifs aux NFT, au métavers et aux actifs numériques’ (INPI, 2022) <pibd.inpi.fr> accessed 6 September 2026.
Lexology, ‘Brand Protection in the Metaverse: EUIPO Updates Guidance on Trade Mark Applications for NFTs and Virtual Goods’ (2023).
Nixon Peabody LLP, ‘Jury sides with Hermès in MetaBirkins trademark infringement lawsuit’ (Nixon Peabody, 10 February 2023) <www.nixonpeabody.com> accessed 6 September 2026.
TAoMA Partners, ‘NFT la main dans le sac: après les USA, la justice française condamne la contrefaçon des sacs Hermès’ (TAoMA Partners, 24 February 2025) <taoma-partners.fr> accessed 6 September 2026.
[1]Tribunal judiciaire de Paris (3rd ch, 2nd sect), 7 February 2025, No RG 22/09210 (Hermès International and Hermès Sellier v Blao&Co).
[2]Code de la propriété intellectuelle, art L713-1; art L713-2.
[3]Code de la propriété intellectuelle, art L713-3; art L713-5 (marques renommées).
[4]EUIPO, Communication on Trade Marks and Non-Fungible Tokens (EUIPO, June 2022); see also Lexology, ‘Brand Protection in the Metaverse: EUIPO Updates Guidance on Trade Mark Applications for NFTs and Virtual Goods’ (2023).
[5]INPI PIBD, ‘La désignation des produits et services dans le cadre des dépôts de marques relatifs aux NFT, au métavers et aux actifs numériques’ (INPI, 2022).
[6]Dreyfus, ‘Protection des sacs iconiques Kelly et Birkin: décision du Tribunal judiciaire de Paris du 7 février 2025’ (Dreyfus, 13 March 2025).
[7]TAoMA Partners, ‘NFT la main dans le sac: après les USA, la justice française condamne la contrefaçon des sacs Hermès’ (24 February 2025).
[8]Tribunal judiciaire de Paris, 7 February 2025, No RG 22/09210, paras 65-67.
[9]ibid; TAoMA Partners (n 7).
[10]Hermès International v Rothschild, No 1:22-cv-00384 (SDNY, verdict 8 February 2023); confirmed by permanent injunction, opinion of Judge Rakoff, 23 June 2023.
[11]Nixon Peabody LLP, ‘Jury sides with Hermès in MetaBirkins trademark infringement lawsuit’ (10 February 2023).
[12]EUIPO (n 3); INPI PIBD (n 4).
[13]Nixon Peabody LLP (n 9).
