NFTs may infringe trademark protection rights, as the Court of Rome has ruled in a case involving Juventus F.C., the legendary football club. This undoubtedly ground-breaking verdict will set the tone for rulings rendered in similar cases by other EU courts.
Consent of a club icon to use his image is not enough
The court dispute concerned the protection of the JUVE and JUVENTUS word marks and the word-figurative mark depicting a football shirt with black and white stripes – the traditional colours of Italy’s most successful football club.
The Blockeras platform offered for sale NFTs and other digital content related to trademarks belonging to Juventus, with the NFTs also containing the image of former Juventus footballer Chistian Vieri wearing the club shirt.
Interestingly, Blockeras obtained permission to use his image in 2024. However, the most interested party, Juventus, had not given its permission either for the use of the JUVENTUS logo or the image of the club shirt. The multiple Serie A champions considered the actions of the platform, in the form of Blockeras minting and marketing its NFT-based cards, as infringing their trademark rights and constituting an act of unfair competition.
As a result, the club filed for injunctive relief to stop Blockeras’ actions.
In the course of the proceedings, Juventus proved that a total of 529 cards depicting the footballer (not only wearing the Juventus shirt) had been sold via the platform, with Vieri’s sale proceeds totalling USD 35 796.87.
The Court of Rome: NFTs infringe Juventus’ rights
First, the Court of Rome considered the trademarks invoked by Juventus to be well known, since they concerned Italy’s most successful football club.
It further emphasised that Juventus was engaged in various merchandising activities (clothing, accessories, games), involving the use of the trademarks, carried out both online and via dedicated stores across Italy.
The Court found that the defendant company had used Juventus’ trademarks in merchandising and had done so without just cause.
Interestingly, Blockeras’ arguments that the registration of the marks did not cover NFT-related goods and services were not upheld. The Court acknowledged that the football club had actively participated in online games based on blockchain technologies, cryptocurrencies and/or NFTs.
When it comes to the authorised use of Vieri’s image, the Court held that Blockeras had been also required to obtain Juventus’ consent to use the club’s trademarks for commercial purposes.
In conclusion, the Court of Rome granted the injunctive relief, finding that Blockeras’ actions constituted an act of unfair competition.
How best to protect your brand against similar infringements
The Juventus case has proved that NFT- and Metaverse-related infringements have become a real issue. It may seem that the first cases have concerned only large, global players, but like all infringements on the Internet, such cases will soon become more widespread.
Nowadays it’s becoming clear that a failure to adequately update trademark applications and adjust the list of goods and services to their use in the virtual world may lead to a serious limitation of trademark protection in the real world.
Not long ago, the European Union Intellectual Property Office (EUIPO) issued its own guidelines on virtual goods, NFTs and the Metaverse. We wrote about this in the “Well-known brands prepare to enter the Metaverse” article (https://www.kochanski.pl/en/well-known-brands-prepare-to-enter-the-metaverse/)
Find out how to effectively secure your brand for entry into the Metaverse and NFT world by contacting me directly