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Juventus’ trademark rights infringed by NFT, says Rome Court!

Publications | Yuki Choy

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On 19 July 2022, Juventus Football Club s.p.a. (“Juventus”) was granted a preliminary injunction by the court of Rome against Blockeras s.r.l. (“Blockeras”) concerning the minting and marketing of NFTs.

Juventus had initiated preliminary injunction proceedings against Blockeras claiming Blockeras committed trademark infringement through the unauthorized production, marketing and online promotion of digital playing cards NFTs reproducing the image of former player Christian Vieri wearing the Juventus shirt and the name of the Juventus football team. In turn, Blockeras sought the dismissal of the motion for preliminary injunction on the grounds of lack of urgency, its right to use and/or market the cards in question, and, in the alternative, claiming that the protected trademarks were not registered in the category of downloadable virtual products.

Juventus is the owner of the wordmarks “JUVE” and “JUVENTUS” as well as the figurative mark consisting of the vertical black and white striped shirt with two stars on the chest (indicating the club's victory in more than 20 championships). The court notes that the Juventus trademarks are well-known trademarks as it considers Juventus the most successful Italian football team with the largest number of fans in Italy and abroad. The court further notes that Juventus is engaged in widespread merchandising activities in various sectors (clothing, accessories and games) both online and through dedicated stores.

The court goes on to point out that there is a likelihood of confusion when the public might believe that the goods or services at issue, the NFT’s, come from the same undertaking, Juventus, or economically linked undertakings and considers that this likelihood of confusion should be assessed globally taking into account all relevant circumstances. The court found in the present case that although Blockeras used the image of Christian Vieri within the limits of the license agreement with the company that manages his image rights, it was still required to request authorization from Juventus for using its registered trademarks and thus the use of the registered trademarks by Blockeras was not justified.

Furthermore, the court notes that the trademark registration (in particular for class 9) also covers goods not included in the Nice Classification and that are inherent to downloadable electronic publications. In addition, the court refers to the fact that Juventus has become active in the field of crypto games, or blockchain games, i.e., online games that are based on blockchain technologies and on the use of cryptocurrencies and/or NFTs.

In view of the foregoing, the court considers the minting and marketing of the cards NFTs by Blockeras not only as a trademark infringement but also an act of unfair competition since Juventus also operates in the sector at issue and the trademarks are registered for classes including such type of activity.

The court upholds Juventus’ requests by ordering Blockeras:

to cease within ten days as of communication of the order any further production, marketing, promotion and offering for sale, directly and/or indirectly, in any manner or form whatsoever, of the NFTs (non-fungible tokens) and digital content referred to in the motion for PI, as well as of any other NFTs (non-fungible tokens), digital content or product in general bearing the image referred to in the motion for PI, even if modified, and/or the Juventus trademarks in suit, as well as the use of such trademarks in any manner or form whatsoever;

to withdraw from the market and remove from every website and/or from every page of a website directly and/or indirectly controlled by it on which such products are offered for sale and/or advertised, the NFTs (non-fungible tokens) and the digital content associated therewith or products in general covered by the injunction;

With this decision, the court of Rome is the first European court to rule that NFTs reproducing protected trademarks without authorization constitute trademark infringement and, on that basis, granting a related injunction.