Barcelona court rules against Mango over use of famous artworks in NFTs - EU trade mark dispute: NERO CHAMPAGNE

Barcelona court rules against Mango over use of famous artworks in NFTs

The Provincial Court of Barcelona has upheld the appeal brought by the rights management organisation VEGAP against Mango (Punto FA, S.L.), overturning an earlier ruling that absolved the company of liability for using artworks in the form of NFTs.

As mentioned in a previous blog post in which we discussed this dispute, the key issue in this case was the scope of the rights held by the owners of the physical artworks. In particular, whether converting a tangible artwork into an NFT constitutes a significant modification that requires the author’s consent or whether owning the physical piece gives you the right to transform and display it digitally, including on the internet or in virtual environments such as the metaverse.

The event dates back to May 2022, when Mango opened a store on New York's Fifth Avenue. In celebration of this, the company hired digital artists to create five NFTs, inspired by original works by Joan Miró, Antoni Tàpies and Miquel Barceló, which are owned by the company's founding family. These NFTs were displayed alongside the original paintings and distributed via platforms such as OpenSea and Decentraland, however, they were not available for download or purchase.

In the first instance, Barcelona’s Commercial Court ruled that Mango’s actions did not infringe copyright because the use was non-commercial and for limited promotional purposes only, and it did not significantly affect the value or integrity of the original works. However, the Provincial Court disagreed. It concluded that transforming and reproducing the artworks in digital environments without authorisation infringed both economic rights (reproduction, transformation and public communication) and moral rights (disclosure and integrity). The court pointed out that the artists had chosen to exhibit their work in a physical format and that displaying it in a virtual environment constituted a new act of public communication that required explicit consent.

Furthermore, the court clarifies that the doctrine of fair use, initially invoked with reference to a United States Supreme Court ruling, is not applicable within the Spanish or European legal frameworks. Since these systems already establish specific limits and exceptions to copyright, the US doctrine of “faire use” cannot be automatically applied. As a result, the court has ordered Mango to delete the NFTs created and to cease any future unauthorised use of the works. The company must also pay total compensation of €750,000: €500,000 for economic damages (€100,000 per work) and €250,000 for moral damages (€50,000 per work).

Meanwhile, Mango has announced its intention to appeal the judgment before the Spanish Supreme Court. The company maintains that it acted in good faith and without commercial intent, and draws attention to the lack of relevant case law concerning the conversion of physical artworks into digital assets. Mango also states that it maintained a collaborative attitude throughout the process and attempted to reach an agreement with VEGAP, but was unsuccessful.

EU trade mark dispute: NERO CHAMPAGNE

On 25 June 2025, the General Court of the European Union ruled on case T-239/23, rejecting the registration of the EU word mark 'NERO CHAMPAGNE' (no. 018024731) for wines covered by the Protected Designation of Origin (PDO) 'Champagne'.

In 2019, the Italian company Nero Lifestyle filed a trade mark application with the EUIPO for several goods and services under Classes 33, 35 and 41 of the Nice Classification. These included wines that met the specifications of the PDO 'Champagne' and services related to advertising, retail and wholesale trade, including the sale of such wines. However, the Comité Interprofessionnel du Vin de Champagne (CIVC) and the Institut National de l’Origine et de la Qualité (INAO) opposed the registration. They argued that the combination of the terms 'Nero' and 'Champagne' could mislead consumers, and that the trade mark would exploit unfairly the prestige associated with the PDO, which has been registered since 1973.

The EUIPO’s Opposition Division partially upheld the opposition with regard to the sale of beers and non-alcoholic beverages (Class 35), but dismissed it for the remaining goods and services. The CIVC and INAO appealed against the decision, which was partially overturned by the Board of Appeal. It upheld the opposition in relation to advertising and business management services, but maintained the dismissal for wines under the Champagne PDO (Class 33), cultural services (Class 41), and the sale of Champagne wines (Class 35). Thereafter, the CIVC and INAO took the case to the General Court.

First, the Court noted, and as Nero had argued, that EU law does not automatically prohibit the inclusion of a PDO in a trade mark. Under the “limitation theory”, a trade mark application which is strictly limited to products which fully comply with the PDO specifications can still be accepted, Nero argued that there was a presumption of validity of such a limited trade mark application. However, the Court also reminded that registration may be refused if the trade mark provides misleading information about the product’s origin, exploits the PDO’s reputation unfairly, or is likely to mislead consumers. 

In this case, the Court considered that the EUIPO was wrong to assume that the presumption could not be challenged. It also noted that the Office had failed to properly explain why the evidence submitted by the opponents was insufficient to challenge the presumption. Furthermore, the Court emphasised the potential for the term 'nero' to mislead consumers. In Italian, 'nero' means 'black' and is commonly used in the names of various grape varieties. This could lead Italian-speaking consumers to believe that the product is 'black champagne', a category that does not exist under the Champagne PDO specification, which only allows for white or rosé champagnes. Therefore, the Court concluded that the 'NERO CHAMPAGNE' mark gives a misleading impression of the product's nature and could exploit the PDO's reputation. Consequently, it upheld the opposition in full, annulling the EUIPO’s decision and refusing registration of the trade mark for all the goods and services applied for.