The concept of “Metaverse”, in a simple and accessible language, refers to a virtual space where users interact in different ways.
Metaverse offers a wide range of experiences and interactions, being a virtual space in continuous development, and with remarkable potential both for the user and for the companies that choose to transpose their products into the virtual space, thus pursuing their commercialization in this form as well.
From the perspective of a brand owner, in the context in which an expansion is desired also on this virtual market, the first initiative in this regard should be the registration of trademarks that express the identity of the brand in question and, extremely important in this context, the trademarks în question to be registered correctly and in accordance with the Nice Classification, in such a way that they enjoy protection in the Metaverse as well.
The importance of these aspects is revealed in the current case from the jurisdiction of the United States of America, namely the Hermes vs Rothschild case.
Thus, among the big brands that currently choose to invest in the registration of trademarks, which will give them the certainty that their brand is also protected in Metavers (ex. Nike), there are also brands that have neglected this approach and this fact is currently harming them, namely the Hermes brand.
In this sense, towards the end of 2021, the Hermes brand discovered that their iconic bag with the name “Birkin” (named after the actress Jane Birkin), the name being registered as a trademark, is marketed as a NFT under the name “MetaBirkin” by the artist Mason Rothschild, who has created a series of virtual bags in various colors that are roughly identical to the famous “Birkin” model.
Given the notoriety of “Birkin” bags, being an extremely sought-after model, and at the same time difficult to obtain for the average consumer, it is not surprising that the Hermes brand is not happy about their trademark being used by another retailer, regardless of whether we refer to physical bags or to bags marketed as NFTs approximately identical to the real model
In this regard, on January 14, 2022, HERMES INTERNATIONAL and HERMES OF PARIS, INC. sued the artist Mason Rothschild for infringement of the trademark “BIRKIN”, the case being currently still pending.
The Hermes vs Rothschild trial is sure to address the issue of the intersection of intellectual property rights with the new digital asset/NFT current, being as well a wake-up call for brands looking to protect their commercial bottom lines in the Metaverse.
