Juventus FC secures injunction to protect trade mark rights in NFTs

On 20 July 2022, Juventus Football Club S.p.A. (Juventus) successfully obtained an injunction in the IP Chamber of the Court of Rome against Blockeras S.r.l (Blockeras), a non-fungible token (NFT) producer, for creating and marketing NFTs and other digital content of the well-known football player, Christian Vieri, wearing a Juventus football kit, without Juventus' prior consent.

The Court's ruling

The Court ruled that the NFTs infringed Juventus' trade marks and that the minting and marketing of those products constituted an act of unfair competition and therefore it granted a preliminary injunction preventing Blockeras from minting and marketing further NFTs featuring Juventus' trade marks and requiring it to remove any such NFTs from the market and any website controlled by Blockeras.

This is the first known judgement by a European court to determine that NFTs, which reproduce a third party’s trade marks without authorisation, amount to trade mark infringement and may warrant an injunction preventing further usage. Key points considered in the judgement include: the reputation of Juventus' trade marks, Juventus' extensive merchandising activity and the likelihood that the public may believe the NFTs are connected to Juventus.

The Court ruled that whilst Blockeras secured Vieri's consent to use his image, it should have obtained Juventus' permission to feature their registered trade marks in the NFTs. The Court found that the Juventus trade marks were registered in Class 9 of the Nice Classification, which expressly includes downloadable electronic publications, and Juventus had evidenced it was already active in blockchain-based online games and NFTs.

Even though an injunction was obtained, it was not possible to force purchasers of any of the infringing NFTs to remove such NFTs from the NFT platform. This is because it is not possible to know the identity of purchasers with regard to transactions made on platforms that use blockchain. Since blockchain technology is immutable, deleting an NFT is therefore impossible strictly speaking. To comply with the injunction, either the NFT owners' need to consent to have the files transferred to Juventus or the NFTs need to be hosted on Blockeras' servers, enabling them to delete the files, which is nearly impossible in peer-to-peer networks.

Our comment

Paul Cox, IP Partner, said: "This leaves some questions open as to how such innovative orders may be effectively enforced by IP rights owners (e.g. in terms of the role of platforms hosting the infringing NFTs and related content, enforcement on the secondary market, assessment of damages, etc.). However, with the now established popularity of NFTs, the chances of related litigation and therefore of courts to be called on resolving these outstanding issues will increase."