The Italian football club Juventus won one of the first lawsuits regarding NFTs and their clash with early registered trademarks.
The dispute at hand concerns NFTs and other digital products created by Blockeras which included an image of the former Juventus Bobo Vieri and the club’s marks JUVE and JUVENTUS.
A non-fungible token (NFT) is a unique digital identifier that cannot be copied, substituted, or subdivided, that is recorded in a blockchain, and that is used to certify authenticity and ownership. NFTs typically contain references to digital files such as photos, videos, and audio.
While Blockeras secured consent from Bobo Vieri for his image, however, they missed doing that for Juventus’ trademarks.
As a result, a lawsuit was initiated in Rome, where the football club claimed a preliminary injunction and an end to the allegedly infringing actions.
The Court concluded that the club’s trademarks were used by Blockeras which in turn could create consumer confusion about whether the club authorized this.
The Court agreed that Juventus’ trademarks are well-known, including used for different merchandising products such as clothes, accessories, and even the club’s own NFTs.
Blockeras’s argument that the football club’s marks protection in class 9 from the Nice Classification, does not cover NFTs, was dismissed. The Court considered that it is not necessary for NFTs to be mentioned precisely in the list of goods because some other included goods can cover such new digital products too.
The Court reminded that the fact Bobo Vieri agreed about the use of his image does not mean that Juventus as a club gave the same permission.