1. The ball in the Court’s court
In July 2022, the Court of Rome issued the first Italian decision on the subject of NFT ( the abbreviation for ‘non fungible token’), marking the first point of jurisprudence with an extremely contemporary issue.
The dispute concerned the use by a company specialised in blockchain technology called Blockeras of the word marks ‘JUVE’ and ‘JUVENTUS’ and of the device mark consisting of the black and white vertical striped jersey with two stars on the chest; all these marks are owned by the club Juventus.
Blockeras, launching a project called ‘Coin Of Champion’ between 2021 and 2022, had started to create and trade NFTs associated with collectible digital figurines; among others, the one of former footballer Christian Vieri in the 96-97 football season in which he wore the Juventus team jersey.
For this last figurine, the company, while having obtained authorisation to use the image of the player, could not count on authorisation to use the trademarks owned by the Juventus club. By virtue of the infringement of the exclusive rights on the use in commerce of its trademarks, Juventus requested, as a precautionary measure, an injunction against the production, commercialisation, promotion and direct and/or indirect offer for sale of the NFTs in question.
The Court, rejecting the objections of the company Blockeras based essentially on the absence of a specific registration of trademarks for NFT or “virtually downloadable products”, accepted the requests made by Juventus with the precautionary petition.
The Judge, when granting the injunction, would seem to have considered of fundamental importance the notoriety of the club Juventus and its trademarks, the Italian football team this most titled and with the most supporters in Italy and abroad. Furthermore, Juventus’ established activity in the field of crypto games, i.e. video games based on blockchain technology, was taken into account.
Finally, the judge considered, for the purposes of establishing the infringement, that the trade mark registrations expressly claimed (in particular for class 9) “downloadable electronic publications”, deeming irrelevant the lack of mention of “virtually downloadable products” as argued by the defendant.
2. How to protect your trademark in the metaverse?
In light of what has been discussed by the Court, we can identify three alternative ways to ensure the protection of one’s trademark in the metaverse: the “famous trademark” protection (i), the registration of the trademark for NFTs (ii), and unfair competition (iii).
i. The ultra-merceological protection of well-known trademarks
Firstly, it is essential to remember the particular protection enjoyed by well-known trademarks (of which the Juventus trademarks are a clear example). The well-known trademark, by virtue of its widespread recognition among the public, enjoys “ultra-merceological ” protection, which extends to products and/or services not related to those claimed in the registration.
In this sense, the dispute regarding the Juventus club allows us to emphasize how such trademarks enjoy full protection for virtual products in the metaverse such as NFTs, even if not claimed in the application.
However, trademarks that can boast ultra-merchandising protection are a small minority, and this necessitates the need to identify other methods of protection for the remaining types of non-famous trademarks
ii. The registration of the trademark for class 9 products (NFTs)
The Court then focused on the registration of the Juventus trademark filed for “downloadable electronic publications.”
In light of this, if a company has an interest in operating in the metaverse, providing blockchain-related products and NFTs, it will be essential to pay careful attention to the claim of products in class 9 (which includes software and other computer technologies), expressly specifying “Downloadable digital files authenticated by non-fungible tokens [NFTs].” Alternatively, a general claim, such as “downloadable electronic publications” like the Juventus trademarks, could be opted for, which in light of the decision would appear similar to NFTs.
We remind you, however, of the always necessary use of the trademark in the five years following registration to avoid its cancellation for non-use.
iii. Protection provided by the unfair competition
The Court deemed it significant to remember that the unauthorized use of another’s trademark in the same market, as well as the undue appropriation of its merits, constitutes a case of unfair competition. Consequently, the actual presence in the metaverse can, in certain cases, guarantee trademark protection even in the absence of registration for NFTs.
Finally, the question arises as to how companies that do not possess well-known trademarks, nor registered trademarks for NFTs, and are not even active in this sector can protect themselves.
Perhaps there is a potential interest for every company to operate in the metaverse? If so, could the requirements of potential unfair competition be fulfilled, even in the absence of actual activity in the same market?
In order to answer these questions, it will be essential to verify either whether the entrepreneur who has not yet started their activity is already in an organizational/preparatory phase or, in terms of significant probability, or an expansion in the future of the company’s business activity in those sectors in which the “potentially damaging” company operates.
Perhaps there is a potential interest for every company to operate in the metaverse? If so, could the elements of potential unfair competition be integrated, even in the absence of actual activity in the same market?
In order to answer these questions, it will be essential to verify whether the entrepreneur who has not yet started their activity is already in an organizational/preparatory phase or, in terms of significant probability, an expansion in the future of the company’s business activity in those sectors in which the “potentially damaging” company operates.
(Court of Rome Order, RG no. 32072/2022, 20.07.2022)
 According to Article 7 of the IPC, a trade mark is only protected in relation to certain goods and services precisely listed in the application for registration