Own goal in NFT trade mark infringement case

One of the hottest trade mark issues around at the moment is the question of how effectively can trade mark rights protect brand owners’ interests in non-fungible tokens (otherwise known as “NFTs”).

Given the relatively nascent technology of NFTs, there have been few trade mark cases in Europe (or indeed elsewhere in the world) to test the limits of trade mark protection for NFT content.  One recent case, from Italy, involves the famous Italian football team, Juventus.

Juventus became aware of a third party company called Blockeras (a blockchain specialist) who had minted and were commercialising various NFTs, which included various of Juventus’ trade marks, as well as the image of a former Juventus player, Christian Vieri.

A quirk of this case was that Vieri had apparently given some form of consent to use his image.  Nonetheless, the Italian court held that, in the circumstances of the use of Juventus’ various trade marks within the NFTs, Blockeras’ activities were potentially likely to cause confusion and thus constitute trade mark infringement.  On this basis, the court in Rome granted a preliminary injunction against Blockeras.  The fact that Vieri has licenced his image did not amount to a defence to the allegation of trade mark infringement.

Comment

The trap for the unwary in relation to NFTs is that NFTs often contain a whole bundle of IP rights; trade mark rights just being one element.  For example, the following IP rights could subsist in an NFT:

• Registered and/or unregistered trade marks (e.g. in the brand name, such as Juventus or JUVE).
• Registered and/or unregistered trade marks in other elements (such as logos).
• Copyright (e.g in logos or artwork).
• Registered or unregistered design rights (e.g logos).

Given that the above IP rights are divided yet further into national rights around the world, it becomes evident that assessing the IP licensing position in relation to NFTs can be complex.  NFT providers, such as Blockeras, may think that one set of permissions may be enough, but the trap for the unwary is that additional IP rights may lurk within any given NFT.

#trademarks #NFT #trademarkinfringment #TMinfringement

Author: Piers Strickland, Partner and Joint Head of the IP Team at Waterfront Law.  Piers is a member of the emerging issues sub-committee on blockchain and has recently contributed to a White Paper presented to the board of the International Trade Mark Attorneys Association on the subject of trade marks and NFTs.