[Guest post] Turin Court of Appeal upholds protection of Juventus FC’s unregistered colour combination trade mark for ‘Be the stripes’ jersey

The Juventus colour combination mark at issue in the case

The Turin Court of Appeal had the opportunity to consider a number of intriguing issues in a case decided during autumn 2024 (Case no. 100/2023, 22nd November 2024) and concerning the renowned Italian football club Juventus, one of its official resellers (i.e., the individual company Pegaso), and the Portuguese company Mussara.

Specifically, the decision tackles the: 1) protection of a non-conventional trade mark such as an (unregistered) colour combination mark; 2) protection of a specific font as either a copyright work or as an unregistered design; 3) cumulation of multiple IP rights on a single product.

In 2019, Juventus successfully sued Pegaso before the Turin Court of First Instance over the marketing of a shirt which reproduced the characteristics of the club’s Adidas-designed jersey ‘Be The Stripes’ for the 2019/20 season.

La Vecchia Signora (as its supporters call it) claimed inter alia unregistered trade mark infringement, unfair competition and unregistered design infringement.

The Court of First Instance awarded damages for over EUR 100,000 (most of them by way of recovery of the profits made by Pegaso).

The defendant appealed the decision claiming, amongst others, the inexistence of the unregistered trade mark related to the jersey (whose ownership, in any case, would be Adidas’s and not Juventus’s, as the former designed the shirt) and its infringement, as well as the lack of any unfair competition.

The Court of Appeal entirely upheld the first instance judgment by highlighting, first, that on a single good different IP rights belonging to two separate entities (in the case at hand, the design owned by Adidas and the unregistered combination colour trade mark owned by Juventus) may coexist. In this respect, it must be recalled that the well-known judgment of the CJEU in Cofemel [IPKat here] mutatis mutandis had already made it clear that the protection of designs and the protection associated with copyright may be granted cumulatively to the same subject matter, even if only in certain situations. In that case, the CJEU specified in fact that such dual protection shall be reserved only to designs meeting the EU standard, i.e. the different objectives and criteria for protection under both copyright and design law.

Then, the Turin court clarified that the owner of the combination colour trade mark is undoubtedly Juventus and not Adidas, as the former publicly used the shirt (which also bears Juventus’s word mark along with the Scudetto won in the previous season) in its home games throughout the 2019/20 season.

For the same reasons, the Court also found that the specific colour combination (white and back with a pink central stripe) was a renowned distinctive sign of the Turin-based club and that, therefore, it enjoys the unregistered trade mark protection pursuant to Art. 12, let. b) of the Italian Industrial Property Code (IPC).

Eagerly awaiting the next bomber recruitment round

All the above said, the appellate decision excluded that the specific font used for the soccer players’ surname displayed on the rear of the jersey enjoys either copyright protection or design protection due to the non-subsistence of the relevant requirements.

The decision provides useful insights regarding IP rights on a product as peculiar as a professional football kit, which typically results from commercial partnerships between football clubs and technical sponsors.

While the allocation of the multiple IP rights coexisting on a jersey is normally determined by the agreements concluded between the entities involved, the Turin Court of Appeal had no doubt in identifying Juventus – in the absence of a claim by Adidas – as the owner of the colour combination mark.

The reasoning that led the Court to this conclusion – as well as to grant the unregistered trade mark protection pursuant to Art. 12, let. b) IPC – is based on the fact that such colour combination is a well-known mark of the Italian club which has publicly used it for the professional sporting activity of its teams.

Finally, this case is further proof that Juventus is very active in enforcing its IP rights: it must be recalled that only a few years ago the same club obtained a landmark decision from the Court of Rome (Case no. 32072/2022, 20th July 2022) which granted a preliminary injunction for the unauthorized production, advertising and offer for sale of NFTs (non-fungible-tokens) and other digital content related to pictures reproducing Juventus’ trademarks [IPKat here].