The Juventus Unregistered Trademark on the “Be The Stripes” Uniform
Premise
In a judgement (civil proceedings under docket No. 952/2024) published on November 22nd, 2024, the Court of Appeal of Turin granted protection to the unregistered trademark “Be The Stripes”. This sign is owned by Juventus Football Club and is associated with their official uniform for the 2019/2020 football season.
The legal case involved the well-known football team, its official retailer Pegaso di Valenti Rocco and the Portuguese company licensing the “CR7 Musue” trademark, Mussara LDA.
In particular, the proceedings began in November 2019, when Juventus Football Club filed an action on the merits against Pegaso. Juventus Football Club contested Pagaso’s marketing and distribution of a shirt bearing the “CR7 Museu” trademark, which also reproduced the main features of the “Be The Stripes” uniform.
In January 2020, Pegaso filed its statement of defence and response, objecting to all of the plaintiff’s claims. Additionally, Pegaso summoned Mussara as a third party to ascertain Mussara’s contractual liability and to be indemnified from any claim by Juventus Football Club.
The Turin Court of Appeal’s judgment fully confirmed the first instance judgement (Turin Court, docket No. 3437/2022, judgement published on August 1st, 2022), rejecting the appeal filed by Pegaso and the cross-appeals filed by Juventus Football Club. and Mussara.
We can conclude that the first and the second instance both judgements deal with the following legal issues: (i) the protection of an unregistered colour trademark; (ii) the protection of the font of the uniform under Italian Copyright Law or as a design; (iii) the contractual liability for breach of good faith in the execution of a contract.
The content of the two judgments
Firstly, the Court of Turin granted protection to the Juventus’ trademark rights for their “Be The Stripes”. The decisions acknowledge that Juventus shirts have been famously recognized by their black and white striped design for over a century.
The judgements also stated that this combination of black and white stripes constitutes a colour trademark whose distinctive nature is not obscured by the existence of similar shirts used by other football teams, such as Udinese, Siena and Ascoli in Italy and Fulham in the UK. This is given the possible coexistence on the market of similar trademarks pursuant to Article 28, paragraph 1, of the Italian Industrial Property Code, which states: “The owner of an earlier trademark pursuant to Article 12 and the owner of a prior of previous use that is well known not merely at a local level, who during five consecutive years has been aware of and tolerated the use of an identical or similar later registered trademark, may not request a declaration of nullity of the later trademark or oppose the use of the same for the goods or services in relation to which that trademark has been used on the based on his own earlier trademark or right of previous use, unless registration of the later trademark may not oppose the use of the earlier trademark or the continuation of the previous use”.
Moreover, this case also applied the principle of cumulative protection of intellectual and industrial property rights, which has already been established in notable case law (e.g. EU Court of Justice, September 12, 2019, C-638/17 - Cofemel case law).
In fact, the Turin Court and the Turin Court of Appeal have both granted protection to the “Be The Stripes” uniform under design and copyright law. Specifically, the Turin judges affirmed that both the design rights (owned by the sponsor Adidas) and the trademark rights claimed (by Juventus Football Club) can coexist on the same product.
In light of the above, the defendant Pegaso was sentenced of trademark infringement and unfair competition under Article 2598, nos. 1, 2 and 3 of the Italian Civil Code. The judgements were based on their marketing and distribution of shirts that reproduced the key features of the “Be The Stripes” uniform. Specifically, the infringing shirts included: (i) the presence of the Championship shield; (ii) the identical color scheme (two large stripes, one white and one black, separated by a thinner pink stripe); and (iii) the “CR7 Musue” trademark, licensed by Mussara and referring to the most famous Juventus player of that season, Cristiano Ronaldo.
Consequently, all the plaintiff’s claims regarding the protection of the font used for the “Be The Stripes” uniform were rejected by the Turin Courts. The protection of the font was excluded due to its strong resemblance to existing fonts. The similarity indicates that it does not fulfill the originality and creativity criteria required for copyright protection, nor the novelty and individual character requirements for design protection.
Finally, it also should be noted that the licensor, Mussara, was held liable under Articles 1175 and 1375 of the Italian Civil Code. This was due to its bad faith in executing the licence agreement for the “CR7 Museu” trademark with Pegaso. This liability stems from the licensor’s failure to authorize the licensee to market an alternative or replacement shirt model to the one deemed counterfeit.
Conclusions
Looking ahead, the two judgments we examined set a significant legal precedent for several reasons.
First, the decisions reaffirm the legal principle of cumulative protection for intellectual and industrial property rights. This is particularly important for the sports sector, where multiple entities often jointly own different IP rights to the same good.
Second, this case is also highly relevant for the protection of unregistered trademarks. In particular, it demonstrates that the legal protection of an unregistered trademark primarily depends on its owner’s actual and continuous use of the trademark and the reputation it has acquired among consumers.
Article published in today's Lexology Newsletter, written by our associate Leone Cei.