Taming NFTS with Trademark Law Tools: Future Challenges for Sri Lanka

Abstract

When NFTs were first introduced, it was generally believed that they would foreclose avenues for trademark counterfeiting owing to their innate characteristics. Despite all the optimism, NFTs have given rise to a number of unprecedented trademark issues. Thus, the question arises whether the traditional trademark law regime is sufficiently equipped to tackle NFTs-related trademark issues. Although it ostensibly involves a mere extension of the existing trademark law principles to a new phenomenon, in effect, it entails an arduous exercise infused with intricate legal issues. To be more explicit, the complexity of the legal issues posed by NFTs has baffled many sophisticated legal regimes in the world including the USA and EU. The legal issues that surfaced in Hermès Int’l v.Rothschild, 590 F. Supp. 3d 647 (S.D.N.Y. 2022), Nike Inc. v. StockX LLC. 1:22-cv-. 00983 (S.D.N.Y. February 3, 2022) and Juventus F.C. v Blockeras s.r.l, (Docket No. 32072/2022, Court of Rome IP Chamber, 20/07/2022) bear testimony to this fact. As far as Sri Lanka is concerned, however, to the best of the author’s knowledge, the courts have not encountered any NFTs-related trademark disputes so far. But this does not mean that it will be immune from such issues in the future. The concept of NFTs has become so pervasive that it is no longer limited to sophisticated jurisdictions. Therefore, in this paper, an attempt is made to critically evaluate the adequacy of the existing legal regime on trademarks in Sri Lanka to grapple with the legal dilemma created by the proliferation of NFTs in the virtual realm. This paper will also look at the developments in comparative jurisdictions, specifically, the USA and EU with a view to shedding light on how the international experiences and best practices can be used to ameliorate the Sri Lankan trademark landscape, inview of the growing menace of NFTs.