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For the first time in European territory, an Italian court has inhibited the marketing of NFTs depicting the registered trademark (of a football club). Let’s find out exactly what happened:
As everyone knows, Juventus Football Club Spa is the owner of the registered trademarks “Juventus” and “Juve”. The black and white vertical striped jersey with two stars on the chest is also its registered trademark.
Well, Juve had discovered that a third-party company had decided to create and sell online NFTs consisting of “digital stickers” depicting one of its best-known former players.
As a matter of fact, the player had given consent for the exploitation of his image, but the consent that had not been requested … was for the exploitation of Juventus’ registered trademarks.
As a result, in order to stop the wrongdoing, the well-known football club had decided to sue, out of urgency, the company responsible for the marketing of the “figurines-NFT.”
Before examining the order of the Court of Rome, let us see what the Law says.
Soccer teams usually register their trademarks in the commodity classes of their main interest (e.g., clothing, sporting events, etc.) precisely in order to prohibit competitors from exploiting them in the same commercial sectors.
After all, “registration shall have effect limited to the goods or services specified in the registration itself and to related goods or services” (see Article 15(2) IPC). As such, companies – not just football companies – tend to file trademarks in many classes of goods in order to have broader protection from the outset.
The company that had created the “NFT-stickers” had thus defended itself by arguing that Juventus did not have the exclusive right, derived from its registered trademarks, even with regard to the marketing of IT products such as digital stickers.
It should be noted, however, that well-known marks, even regardless of the number of classes-sectors claimed in the filing, can count on so-called ultra-merceological legal protection.
As far as we can tell, although we do not know exactly the evidence produced in the case, Juventus is, to all intents and purposes, a well-known football club, so its identifying marks could be considered renowned.
Our Industrial Property Code provides that the owner of a well-known trademark “…shall have the right to prohibit third parties, except with his own consent, from using […] a sign identical or similar to the registered trademark for goods or services, even if not related […] if the use of the sign, without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark” (see Article 20(1)(c) of the IPC).
However, let’s see exactly what conclusions the Court of Rome reached at the outcome of the precautionary investigation.
The Court of Rome (in an order dated July 20, 2022) ascertained, albeit summarily, that Juventus has carried out “widespread merchandising activities in various sectors (clothing, accessories, games) carried out both through the web and through dedicated stores located in various parts of Italy with the use of the trademarks in question; the company’s presence on the main networks; and the promotion of numerous fan clubs.” The court even found it to be “a notorious fact that said trademarks concern the most titled Italian soccer team with the most fans in Italy and abroad.”
As we have seen, the Industrial Property Code, in Article 20(1)(c), provides that the owner of a well-known trademark may prohibit third parties from using a sign identical or similar to the registered trademark for even unrelated goods or services (so-called “ultra-merceological protection”).
The court found that the Juventus trademarks were registered also explicitly claiming Class 9 (of the Nice International Classification), referring specifically to downloadable electronic publications.
In other words, even if the trademark had not been notorious, the Judge would still have agreed with Juventus because it had prudently registered the trademark in class 9 (that of software and NFTs) as well. The Judge also noted that since Juventus is also active in the online video game sector (and beyond), the use of the distinctive signs would have resulted in a high likelihood of confusion for consumers and an unfair advantage for competitors.
In light of the considerations made, the Court of Rome finally ordered an injunction against “the further production and marketing, promotion and offer for sale, direct and/or indirect, in any way or form, of the NFTs (non-fungible tokens) and digital content in the narrative, as well as any other NFTs (non-fungible tokens), digital content produced in general bearing the photograph referred to in the narrative, even if modified, and/or the Juventus trademarks referred to in the narrative, as well as the use of said trademarks in any form and manner.”
In filing a trademark, great care should always be taken with the so-called choice of classes in order to obtain the most fitting protection possible with one’s business sector. With the digital transformation and the advent of technologies such as blockchain and NFT, companies should be even more careful to weigh the potential claim, defensively, even in the typical class of software and other information technologies (Class 9).
As a matter of fact, there are very few well-known trademarks and, consequently, companies that can count on so-called ultramerceological protection.
Pay attention, however. The latest EUIPO guidelines stress that since NFTs are potentially associated with any product or service, the class description will have to be particularly specific and accurate. It seems to us that the issue is beginning to resemble that already relevant in sales (class 35) and maintenance (class 37).
The Canella Camaiora Law Firm, which is involved in trademark registration on a daily basis, is best able to advise about the classes, goods and services to be claimed in filings.