NFT Creator infringes trademark registration of the italian football team Juventus

An Italian court handed Juventus FC a win in the most recent round of a legal scuffle over non-fungible tokens (“NFTs”). The Rome Court of First Instance, on 20 July 2022, ruled that the unauthorised minting, advertising and sale of NFTs1 can infringe the trade mark rights of the relevant owner.

 

The Rome Court of First Instance granted the Turin-based football club’s bid for a preliminary injunction, barring Binance-hosted Blockeras s.r.l. from offering up NFTs that make use of the Italian club’s trademarks, including the Juventus and “Juve” word marks, as well as the design of its two-star-bearing black-and-white jersey.

 

Juventus filed proceedings against Blockeras accusing them of infringing the club’s registered marks in relation to the Blockeras NFTs which were linked to trading cards featuring former Juventus striker Christian “Bobo” Vieri.

 

 

The player’s image was not questioned, as Bobo Vieri granted image use permission to the creator of the NFTs. However, he failed to obtain authorization to use the Juventus trademark, which was also featured in the creation.

 

Furthermore, the Italian Court understood that NFTs have legal autonomy compared to the images or data associated with them. As a practical consequence, the Court specifies that the injunction granted concerns both digital content, including the player’s image with Juventus trademarks, and the NFTs themselves.

 

The case is a significant ruling in relation to trade mark rights and NFTs. It is the first known judgment by a European court to determine that NFTs which reproduce a third party’s trade marks without authorization from the rights owner, amount to trade mark infringement and may warrant an injunction.

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Author: Bruno Arminio, Associate Lawyer at Peduti Advogados.

Source: Juventus sues NFT-based fantasy soccer hosted on Binance; Old Lady Shows Her Youth with Win in Significant Trade Mark Ruling Concerning NFTS

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“Região de Garça” is recognized as a geographical indication for coffee in Brazil

The Brazilian Patent and Trademark Office (BPTO) recently published the recognition of “Região de Garça” as its newest appellation of origin to identify coffee of the Coffea arábica species produced in the region. 

 

The region has a long tradition in the production of coffee, with its development being closely intertwined with the production of coffee that is practiced by over 400 families in the area, making the region one of the largest producers of coffee in the State.

 

 

The area covered by the Appellation of Origin is composed by 15 municipalities located in the mid-west of the São Paulo State, that share a centenary history, tradition and culture in the coffee market.

 

The municipalities also share geographical aspects, since they are located in an area covered by the “Planalto de Marilia” and “Serra dos Agudos”, with areas of over 600m of altitude and with temperature between 17,8º and 28,5º.

 

The coffee produced in the area covered by the appellation of origin is destined for the national and international market, being exported to over 20 countries which ads strategical value to the region as one of the main exporters in the state.

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Author: Carla Pinheiro Beisiegel, Associate Lawyer at Peduti Advogados.

Source: INPI reconhece Região de Garça como Indicação Geográfica para café

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

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Federal Regional Court of the 1st Region recognized the right of the pharmaceutical company to obtain data from Federal Revenue of Brazil of the importers and exporters of substance patented by it

Regarding Law No. 9279/96 (Industrial Property Law), a patent confers on its proprietor the right to prevent third parties from manufacturing, using, offering for sale, selling, or importing for such purposes without his consent: I – a product that is the subject of a patent; II – a process, or product directly obtained by a patented process.

 

Thus, in a trial on October 10, 2022, the 6th Panel of the Federal Regional Court of the 1st Region recognized the right of the pharmaceutical company Takeda Pharmaceutical Company Limited to obtain data from Federal Revenue of Brazil of the importers and exporters of substance patented by it (Lisdexamphetamine).

 

 

In this case, the patent-holder company claimed its exclusive rights by requesting that the Federal Revenue of Brazil provides the data of any importers and exporters after it heard that the substance it patented could be manufactured, marketed, and imported without its consent.

 

The judgment of the Federal Regional Court of the 1st Region is in line with Brazilian legislation and is an advance in the protection of patent rights.

 

Lawsuit: 1080560-91.2021.4.01.3400

 

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Author: Thaís de Kássia Rodrigues Almeida Penteado, Senior Associate & Head of Litigation at Peduti Advogados.

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Trademark dilution and its types

The dilution phenomenon occurs when a third party uses a mark or trade name in commerce that is sufficiently similar to a famous mark such that the consumer’s perception of it changes, even if the infractor’s mark involves goods or services totally unrelated to those associated with the famous mark.

 

Trademark dilution often results in diverted sales, which is due to the mark’s weakened distinctiveness including the associations and/or reputation connected with it (2002).

Thus, trademark dilution is divided into three types: tarnishment, blurring and adulteration. Tarnishment occurs when the infringing mark portrays the infringed mark in a negative light and uses elements morally repulsed by society in general. It may also happen when the infringer is offering low quality products, hindering the trademark’s owner reputation.

 

Blurring, on the other hand, happens when the distinctiveness of a mark is impaired by association with another similar mark or trade name. Finally, adulteration happens when a third party modifies the basic characteristics of a trade name and/or mark. According to the author, this type of dilution originated after a case involving two American tractor companies.

 

 

The infringer showed, through pejorative propaganda, a deer running away after seeing its competitor’s tractor, alluding to the inert deer in John Deere’s symbol. In this case, the original trademark symbol, which is a static deer, was adulterated and

was shown moving.

 

Cabral (2002) identifies that trademark dilution is an offense to its integrity, allowing companies to pursue actions against third parties who use its mark and/or symbols in a negative way. Although trademark dilution does not negatively affect the owner (e.g. consumer confusion), there still may be long-term consequences. Hence the importance for an organization to protect its trademark distinctiveness.

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Author: Enzo Toyoda Coppola, Junior Associate at Peduti Advogados.

Source: Diluição: uma teoria defensiva ou ofensiva?

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

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