The relationship between NFTs and trademark protection: the Juventus case

The Court of Rome recently ruled on the application for an injunction filed in a summary proceeding by Juventus Football Club S.p.a. to protect the word trademarks "Juve" and "Juventus" and the figurative trademark consisting of the "black and white vertical striped jersey with two stars on the chest."

Juventus complained of an infringement of its trademark rights by a company that had created digital gaming cards in the form of NFTs (non-fungible tokens) that reproduced, without authorisation, the distinctive signs at issue. Specifically, the cards featured the figure of a former footballer, wearing the Juventus jersey. Although the footballer had granted the respondent permission to use his image, the respondent did not receive authorisation, from Juventus, to use its marks.. For these reasons, the Juventus company asked the Court of Rome to prohibit the respondent from any further production, marketing and sale of NFTs bearing Juventus' proprietary trademarks, to order their withdrawal from the market and to set a penalty in case of delay in compliance, as well as to order the respondent company to provide information that could be used to identify the individuals involved in the production of the product.

In its defence, the respondent sought the dismissal of the application, objecting both to the absence of the requirement of periculum in mora and to its right to use and market the cards on the grounds of their acquisition of the image rights of the former football player. Furthermore, it noted that the plaintiff's trademarks were not registered in the downloadable virtual goods category.

The Court first of all noted how the titles brought by the appellant were well-known and, in any case, protectable since they were registered in Class 9 of the Nice Classification. The Court also found that there was periculum in mora considering that the respondent's product, which was sold through an online platform from April 7, 2022 to May 4, 2022, was, at the time the application was filed, resold from marketplaces on the secondary market.

With reference to the use of the cards reproducing the images of the well-known player, the Court did not find Article 97 of the L.A. to be applicable since the publication of the image was not intended for scientific or educational purposes. Instead, the NFTs were clearly intended for commercial sale. The Court noted how the cards use of the symbols of Juventus had contributed to the value of the NFTs and increased its desirability in commercial terms. 

The Court of Rome, therefore, found that there had been an infringement of Juventus' trademark rights by the respondent, resulting in a genuine risk of confusion for the public, who might have believed that there was a commercial link between the parties. In addition, the conduct of the respondent also reinforced the hypothesis of unfair competition by appropriation of merits in that the third-party trademark, which had already entered the NFT sector by the owner, was reproduced without authorisation.

The Court of Rome, therefore, ordered an injunction against the respondent, prohibiting the production, marketing and sale of both NFTs and the digital content bearing Juventus' trademarks, and ordered the withdrawal of these products from the market, setting a penalty in case of delay.

The decision commented on here is the first injunction obtained in Italy by a rights holder on NFTs and confirms how trademarks can be protected even with regard to unauthorised uses in virtual contexts. It will be interesting to see how effectively the respondent will implement the NFT withdrawal order, considering that these are certificates that once created and placed within the blockchain system are no longer removable or modifiable, but only transferable.