NFT not authorized by the trademark holder: Juventus obtains the first European injunction

On 20th July 2022, the Court of Rome disposed an injunction order for the production and marketing of NFT (non-fungible token), becoming the first European Judge to rule in precautionary measures on the forgery of trademarks through the creation and selling of NFTs.

The case concerned the appeal brought by Juventus Football Club S.p.A, as owner of the word trademarks “JUVE” and “JUVENTUS”, as well as the figurative trademark represented by the well-known shirt with black and white vertical stripes. In particular, Juventus found out about the launch of a collection of digital CARDS, that is of tokenized stickers, showing the image of an ex-athlete with the team shirt on.

Since the football club did not authorize the commercial exploitation of its own trademarks, it acted on precautionary basis against the company promoter of the project, asking for the assessment of the forgery of its own trademarks and for the provision of the injunction from any additional production and marketing of the NFTs at issue.

The defendant tried to argued in its defense, among other, that it had the right to market the digital CARDS on the one hand because the Juventus trademarks did not result to be registered for the class pertaining to downloadable virtual products, and on the other because the image of the ex-football player, depicted in the NFT, had been duly authorized by the company managing his rights to image.

The court of Rome did not accept the argumentations of the defendant.

As a matter of facts, the Court stated that the use of the Juventus trademarks cannot be justified by the interest to public the image of the ex-football player, not even by taking into consideration his notoriety (ex. Art. 97 of the Copyright Law) since the diffusion of the NFTs did not have education, scientific or public information purposes, but seemed to be a mere commercial operation.

With respect to the protection area of the acted trademarks, the Court recalled that the trademarks at issue are pacifically notorious, being “trademarks related to the most awarded Italian football team and with the highest number of supporters in Italy and abroad”. Moreover, in order to grant the requested protection, the registration of the above-mentioned trademarks in class 9 with the expressed clarification that the registration includes also “products not included in the Nice classification and downloadable electronic publications” was considered to be sufficient.

On the basis of such argumentations, the Court considered that the creation and marketing of NFTs bearing the Juventus trademarks – without any authorization from the owner – constitute counterfeiting of the trademarks and give credit to the hypothesis of unfair competition as consequence of the non-authorized use of the trademarks and the appropriation of the advantages connected to their use.

In addition to the injunction from further production and marketing of NFTs, the Court of Rome also provided a penalty of 500,00€ for each day of delay in the execution of the provision and ordered to the losing party to provide any information useful to identify the subjects involved in the different phases of creation and selling of the CARDS together with the quantity and the selling prices.

Ilaria Feriti