Can an NFT infringe one's own trade mark rights? Yes, says Rome Court of First Instance

Bobo Vieri during
his Juventus tenure

Can the unauthorized production (minting), advertising, and offer for sale of a non-fungible token (NFT) infringe one’s own trade mark rights?

The Rome Court of First Instance answered ‘yes’ in the context of a successful application for a preliminary injunction made by Juventus F.C. (decision on 20 July 2022, case No 32072/2022).

Let’s see more in detail how the Italian court reasoned.

Background

Juventus is the holder of word trade marks ‘JUVE’ and ‘JUVENTUS’, as well as a figurative trade mark consisting of the signature black-and-white jersey with two stars. 

This football club discovered that an unauthorized third-party, blockchain-based platform Blockeras, had minted, advertised, and offered for sale NFTs and other digital content relating to images representing said Juventus trade marks, as well as the image of former Juventus footballer Bobo Vieri wearing his Juventus uniform. While Vieri had authorized the use of his image (until 2024), Juventus had not granted any authorization.

As a result, the club applied to obtain a preliminary injunction from the Rome court to put an end to the allegedly infringing activities of Blockeras. In particular, Juventus claimed that the realization and commercialization by Blockeras of its Coin of Champions and NFT-based cards would infringe its trade mark rights.

Readers will be in particular interested to know that Blockeras argued that no such injunction could be granted also because the trade marks at issue would not be registered in relation to downloadable virtual goods.

The decision

The Rome court considered at the outset that the trade marks relied upon by Juventus are well-known marks: Juventus is the Italian football team that has won the most, both in Italy and abroad. The court also noted that Juventus is engaged in various merchandising activities (clothing, accessories, games), undertaken both online and through physical stores across Italy, which entail the use of such trade marks.

The court further recalled that likelihood of confusion in trade mark law entails that consumers might believe that a certain good or service has a different commercial origin from the one that it actually has. Such a risk must be assessed globally, considering all relevant circumstances at hand, including the similarity between the signs and goods/services.

Clearly Federico Gatti is
The IPKat's favourite Juventus footballer 
("Gatti" means "Kats" in Italian)

Turning to the merits of the application, the court found that the defendant company had used Juventus' trade marks in commerce and had done so without due cause. 

As to the argument that the registrations would not cover the goods in relation to which the defendant company had used the signs, the court was overall unimpressed. It concluded that the registrations would also encompass goods in class 9 that are (were: see further below) not included in the Nice Classification, including downloadable electronic publications. In addition, Juventus itself has entered the world of cryptocurrencies and blockchain, including NFTs.

As to the authorized use of Vieri’s image, the court considered this did not exclude that Blockeras was also required to obtain Juventus’s permission for the use of the latter’s trade marks in commerce.

In sum, the Rome court concluded that the application could be granted as there was both urgency and prima facie evidence that Juventus’ trade mark rights had been infringed by Blockeras. The latter’s behaviour would also qualify as unfair competition.

Comment

The decision of the Rome court might be one of the first, if not the very first decision of this kind in Europe. 

On the issue of classification, it is worth recalling the 12th Edition of the Nice Classification incorporates the term ‘downloadable digital files authenticated by non-fungible tokens’ in Class 9. Not too long ago the EUIPO also issued its own guidance on Virtual goods, non-fungible tokens and the metaverse (Katpost here).

In all this, one thing appears certain: more court cases like the Rome one will follow ...