Juventus won a trademark dispute regarding NFTs

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.

Mario Balotelli won a trademark dispute for “MB45” in Italy

The well-known Italian footballer Mario Balotelli won a trademark dispute in Italy.

In 2013, the Italian individual Mr. Gabriele Casagrande registered a trademark “MB45” for class 25 – clothing, shoes, headgear. This mark was duplicated as a European mark and after that both were transferred to a Lithuanian company.

In 2015, finding about this mark, Mario Balotelli initiated a lawsuit asking for invalidation of the sign and the domain name “www.mb45.it”. The grounds for this were the fact that “MB45” is the Balotelli’s pseudonym. MB means Mario Balotelli and 45 is the number of the jersey that he uses. What’s more this sign was used on shoes produced and sold in collaboration with Puma in 2013.

Gabriele Casagrande disagreed with these accusations, stating that his mark “MB45” was inspired by the name of a tugboat of the Russian Navy Morsokoy Buksir with the same name.

The Court in Rome wasn’t impressed by this argument and invalidated the mark. According to the Court, the consumers in Italy, especially the football fans, are quite familiar with “MB45” as an indication related to Mario Balotelli. Additionally, the goods related to Gabriele Casagrande’s mark are typical and common products that famous people and sportsmen used their names or indications for.

The application for the later mark was made only a few days after Mario Balotelli, bearing “MB45”, was included in media materials. Because of this, the application for the mark was deemed as made in bad faith. The same conclusion was reach for the domain “www.mb45.it”.

Source: Martini Manna Law Firm – Margherita Stucchi for Lexology.

Revocation of a trademark for non-use – Italian perspective

The Court of Milan has ruled in a trademark dispute for revocation based on non-use of a sign.

The case concerns an Italian trademark “AQUA NUNTIA” registered in 2012 and equal European trademark registered in 2012. Both signs, own by an individual, target class 03 – perfumes.

Two Italian companies started to offer perfumes under brand “AQVA NVNTIA”. The owner of the earlier signs initiated lawsuits for trademark infringements. And as a logical consequence both companies filed applications for revocation of the marks based on lack of real market use.

The EUIPO revoked the European trademark.

The Italian Court did this for the Italian mark too. The owner submitted evidence for some preparation for the use of the marks such as researching perfume partners, printing brochures, registration of a domain name etc.

The Court dismissed this evidence as insufficient. The key element in order a trademark use to be proved is the consumers knowledge about the mark. The fact that some traders or distributers know about the brand is not enough for real market use in Italy.

The owner tried to warrant the lack of trademark use with her health problems throughout the years but the Court dismissed this too. The reason is that one mark can be used by third parties when this is authorized by the owner through a license. From that perspective options for use of the marks were available.

Source: Bird & Bird LLP – Federico Manstretta for Lexology.

Diego Maradona won a lawsuit against Dolce & Gabbana

Diego Maradona prevailed in a lawsuit against the famous Italian fashion house Dolce & Gabbana.

The reason for the dispute was an event organised by Dolce & Gabbana which aim was to celebrate the symbols and the story of the city of Naples.

During this event, one model showed a blue and white football shirt with number 10 and the name of the former footballer.

As it is well-known, Diego Maradona made a name as one of the best footballers in the world when he played for the local football club Napoli in the 80s of the 20th century.

The problem was that Dolce & Gabbana didn’t ask Maradona whether they can use his name for this event. According to the article 8(3) of The Italian Industrial Property Code, names of famous people are protected when they are used commercially even in case these names are not registered as trademarks.

The Court in Milan ruled in favor of Maradona. The reason for this was the fact that by using the name of the famous footballer, the fashion house could lead consumers to the conclusion that there was a commercial relationships between both parties. Merchandising and celebrities endorsement campaigns are a widespread marketing approach around the world.

In that way, Dolce & Gabbana took advantage of the name and reputation of Diego Maradona.

The fact that the event was only to praise the symbols of Naples could not warrant the use of the footballer’s names because it was possible consumers to be misled to belief that there were commercial relationships between both parties which was not the case.

The Court ordered 78 000 dollars in damages.

Source: WIPR.

Is NOSECCO different from PROSECCO for wines?

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One interesting news from the UK shows clearly how powerful can be the protection of geographical indications.

In the case at hand, Les Grands Chais De France applied for an international trademark NOSECCO for class 32 – non-alcoholic wines; non-alcoholic sparkling wines, where the UK is a designated country.

Against this application, Consorzio di Tutela della Denominazione di Origine Controllata Prosecco filed an opposition based on registered geographical indication for PROSECCO.

As it is well-known, Prosecco is a famous wine that can be produced only in some areas in Italy.

The UKIPO upheld the opposition and refused the NOSECCO trademark application stating that both signs are similar for identical goods.

While Les Grands tried to claim that these marks are different based on the different beginnings, the Patent Office disagreed. In this case, there is a visual and phonetic similarity which can create consumers ‘ confusion.

This case comes to show that geographical indications protection can be invoked not only against identical signs but against similar too, especially where there is a strong reputation of the earlier indication among the consumers.

Source: Claire Keating – Marks & Clerk.

Is it possible to use a photo from the internet for your fashion collection?

The Milan Court has ruled in the case 2539/2020, which concerns not authorized use of a photo for commercial purposes.

In the case at hand, the Italian fashion house Antonio Marras used the following photo, downloaded from the internet, for its Fall/Winter 2014-15 fashion collection:

A lawsuit followed in which the photographer claimed copyright infringement. In Italy, there are two main ways for the protection of photos. The first is the classic one based on the copyright law where, however, the work has to be original, created as a result of the author’s intellectual efforts. The second protection refers to ordinary, simple photos of the real-world without creative efforts in place.

According to the fashion house, there was no copyright infringement because the photo was quite simple and not original, produced without any creative efforts.

The court disagreed. Grounded its position on the European Court decision in the case Painer, C-145/10, the Italian court came to a conclusion the photo was original indeed. The arguments for this were the fact that the author chose carefully the time and the subject to take this photo. What’s more, he used technique and an angle which to invoke specific emotions in the viewers.

The court added that another backing argument for the originality of the picture was the fact that it had been registered in the US Copyright Office, which is possible only if the work is original.

Source: IPKat.

Ferrero defended successfully its Tic Tac container again

One of the biggest foodstuff producers in the world Ferrero successfully defended its 3D trademarks for the famous Tic Tac container.

The case at hand concerns a Czech producer which sells identical products using very similar container but with different brand BLIKI.

According to this producer, Ferroro’s container cannot function as a trademark because it has a technical function and adds substantial value. In addition, the BLIKI brand makes a difference.

The court in Turin disagreed. In regard to the brands, this was irrelevant for the case because the earlier mark was only 3D.

The court considered that the Ferrero’s mark has no technical function. Apart from this, there was no evidence that consumers buy Tic Tac because of the substantial value given by the container.

This case is a good example of the significant role that trademark protection has in every company IP strategy. While design protection can last up to 25 years, trademarks can exist forever in they are maintained properly.