The Court of Rome, in a preliminary order dated July 20, 2022 (available in English HERE), is the first Judge at the European level to order an injunction from the creation and marketing of Non-Fungible Tokens infringing registered trademarks.
As we have already mentioned a few reasons for interest last week (HERE), we will try now to excerpt from the decision a few other considerations worth mentioning, related to trademark registration and the correlation between image rights and trademarks violation.
It is worth to notice, in fact, how on the one hand the Court gives direct relevance to the fact that the trademarks in question are well-known, among other things concerning “the most titled Italian soccer team with the most supporters in Italy and abroad”, thus confirming how it is not necessary to consider whether Juventus had also registered its distinctive signs in relation to “digital objects” or (even more specifically) “digital objects certified by NFT”.
On the other hand, while evidently not finding the circumstance decisive (in light of the preceding considerations), it considers how a trademark registration in class 9 for goods “also relating to downloadable electronic publications” is sufficient to also include the particular digital content in question. Which, moreover, is an implicit accreditation of that interpretation now also adopted by major national and international offices, including EUIPO, whereby class 9 is the one designated for the registration of trademarks used to distinguish certain types of “digital goods”.
At the same time, the decision is undoubtedly interesting for clarifying how “the circumstance that [the player] actually played for Juventus and that the latter granted permission for the use of his image through the creation of Cards that reproduced the player with the different jerseys of the teams in which he played do not exclude, therefore, the need to seek authorization of the use of the registered trademarks inherent in the teams whose jerseys and names are reproduced, since these are goods intended for commercial sale, in relation to which the fame of the different teams in which the player played also contribute to the value of the digital image to be purchased”.
With such a consideration, the Court reiterates, therefore, how the provision of Article 97 of the Italian Copyright Law, concerning the permissible uses of a person’s image right, does not extend to the use of trademarks that may be represented in that same image.
Header image: juventus.com
