In 2021, Blockeras, a company that operates in the crypto market, launched an NFT project consisting of the minting and marketing of trading cards in NFT format (CARDS) depicting famous past and present sports players. Buyers of CARDS were also able to trade these collectibles on Blockeras’ platform, each time paying a transaction fee to the platform owner, establishing a secondary market.
A series of these NFT CARDS was dedicated to the Italian football player Christian (a.k.a. Bobo)
The decision of the
Trade mark infringement: Blockeras had argued that the trade marks alleged to have been used in the NFTs, had not been registered for virtual downloadable products and did not expressly claim “NFT” in the Nice classes for which the trade marks were registered, The Court did not agree: firstly because the trade mark specification expressly mentioned that the registration included products not listed in Class 9 and, in particular “downloadable electronic publications“; and secondly because, in any case,
On these grounds, the
In its reasoning, the Court was also not swayed by the defendant’s arguments that (i) the NFTs were minted with the individual player’s consent to use his image and that, in any case, (ii) the CARD was protected under Italian copyright law as a reproduction of a famous person, falling under the specific exception set out by Art. 97 of the Italian copyright law which applies to famous person ‘portrait. The Court rejected these arguments claiming that:
Therefore, the Court rejected all Blockeras’ arguments of non-infringement and found the NFT CARDS to be an unauthorised and infringing reproduction of the football club’s trade marks.
Unfair competition: In addition, the Court found that Blockeras’ conduct constituted an act of unfair competition because the company, through the unauthorised reproduction of the famous trade marks, was using a third party’s trade mark without consent and was appropriating qualities of the trade marks for the benefit of its business. Unfair competition provisions applied in light of the fact that
Overall decision of the Court: In light of its conclusions on both the trade mark and unfair competition claims, the
The decision of the
Following an extensive interpretation of existing principles, the
Going forward, it may become much more common to see trade mark registrations that expressly cite NFTs and other digital assets. The 12th edition of the Nice Classification, which is effective from
This dispute is likely to be one of a string that will involve NFTs and IP rights as this new asset class becomes established in the media. An understanding of the impact of such use on trade mark, copyright, design rights and moral rights to mention just a few IP rights, is key for all those creating NFTs and licensing their rights to others to do so. Monitoring the metaverse for brand, design and art work misuse will also be a priority for brand owners and designers alike. .
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