Juventus FC (affectionately known as the “old lady”) has won a notable judgment in a trademark infringement lawsuit brought against non-fungible tokens (“NFTs“) Producer Blockeras srl (“Broccellas”). The Rome Court of First Instance ruled on July 20, 2022 that the unauthorized minting, advertising and sale of NFTs is illegal.1 May infringe the trademark rights of the relevant owner.
Juventus FC has asked the court for a temporary injunction to stop Blockeras from selling NFTs using the Juventus trademark. The mark included the words “Juventus” and “Juve” in his mark, as well as the football club’s famous black and white jersey design.2 Juventus has taken action against Blockeras, accusing it of infringing on the club’s registered trademark, in connection with a Blockeras NFT linked to a trading card featuring former Juventus striker Christian “Bobo” Vieri. filed a lawsuit.
This lawsuit is an important judgment related to trademark rights and NFTs. This is the first known decision by a European court to determine that NFTs that reproduce third-party trademarks without the rights owner’s permission constitute trademark infringement and may warrant an injunction.
Opposite of Juventus
Blockeras is an Italian company founded in 2018 that specializes in blockchain technology. In 2021 Blockeras has produced, minted and sold 68 of his NFT trading cards featuring Christian Vieri. To produce NFT, Blockeras got consent from Vieri and signed him to a commercial deal, but not from Juventus. Considering Blockeras’ trading card featured a black and white Juventus kit and referenced the team’s name, Juventus issued an order to Blockeras to stop manufacturing, marketing and selling his Vieri NFTs. I applied for a temporary injunction.
A court in Rome ruled that the trademarks Juventus relies on are well-known trademarks and the club is one of the most famous clubs in Europe, having won several Italian league titles and the Champions League title. , and therefore will be widely recognized by consumers. The court also found that Juventus was involved in various merchandising activities (accessories, games, clothing) sold offline and online in Italy and Europe, demonstrating clear use of the mark. I mentioned Regarding potential confusion, the court found that Blockeras’ use of the Juventus mark on the Vieri NFT likely caused consumers to become confused about the commercial origin of his NFT and mistakenly associate it with Juventus FC. did.
Blockeras’ main objection was that the injunction should not be granted because the trademark in question was not registered for use in “downloadable virtual goods.” The court rejected this argument for the following reasons.
(i) club marks are widely recognized regardless of designation given that “the club is the most successful in Italian football” and therefore need not be considered for use on digital objects;When
(ii) Notwithstanding Blockeras’ counter-argument, Juventus will not sell its goods and services to Nice for use in connection with “downloadable digital publications” that the Court has determined are sufficient for use as NFTs. Maintain registration of that trademark in class 9 of the classification.
The court also highlighted that Juventus has a deal with global fantasy football game platform Solare.3 Therefore, it has already proven effective in the following areas:
“Online games based on blockchain technology and the use of cryptocurrencies and/or NFTs”.
The court further noted that Juventus’ extensive merchandising activities extended to the club’s presence on major social networks, indicating that Juventus had used its marks in the digital world. did.
judgment meaning
The court’s interpretation of Juventus’ presence in the digital market is fairly broad, but in line with the broader European approach that Class 9 registration of well-known trademarks is not normally required to obtain protection against NFT infringement. Moreover, while many brands are urgently trying to record their marks with a registration designating a digital class of protection, the Rome Court’s ruling emphasizes that this approach is not entirely necessary. In many cases, brands can rely on trademark registrations already widely used in the non-digital space to protect them from NFT infringement.
The injunction given to Juventus was also extensive. Blockeras was prohibited from engaging in the further production, marketing, or sale of NFTs and digital content related to NFTs. Digital images are commonly associated with NFTs and used as part of marketing for sale. A Roman court ruling banned the use of these images and provided Juventus with a wide range of protections.
important point
This landmark ruling is important for brands, as they are likely to face more precedent-setting rulings for trademark infringement stemming from NFTs and other products generated from blockchain technology. , which may be trending in European courts. Key learning points for brands include:
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You should seek legal counsel before creating an NFT, especially if it is designed with a specific athlete, sport, club, brand, or celebrity in mind. This means that appropriate checks can be made to determine the common uses of the relevant destinations. Blockeras was unable to properly obtain a license to use the previous trademark rights held by Juventus, which prevented it from selling Vieri NFTs (despite Vieri’s consent).
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Brands should note that existing trademark protection in the non-digital space may be sufficient to grant protection in the digital space, provided the brand can show sufficient examples of the mark’s actual use. need to do it.
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Courts will only face more NFT trademark infringement lawsuits in the future, and brands should be aware of potential infringement.
footnote
1 NFTs are digital tokens generated by blockchain technology. They can be bought and sold using cryptocurrencies and represent proof of ownership of virtual or physical assets. The value of NFT lies in its unique design.
