Mango Prevails: Court Supports NFT Art Exhibition in Metaverse - General Court Upholds Yannick Noah's TM Against Non-Use Cancellation Action

Mango Prevails: Court Supports NFT Art Exhibition in Metaverse

At the end of January, Barcelona's Mercantile Court No. 9 ruled in favour of Mango in a lawsuit involving Mango and the copyright society VEGAP over the creation of NFT inspired by the works of three well-known Catalan authors. The lawsuit, filed by VEGAP, sought 1.37 million euros in damages from the fashion company for infringing copyright by reproducing the works without authorisation.

In May 2022, Punto Na SA, the company which owns the Mango brand, hired video and crypto artists to create digital artworks for the inauguration of a store in New York. Their inspiration came from paintings by Catalan artists Joan Miró, Antoni Tàpies and Miquel Barceló, the originals of which are owned by Mango.

Mango's project aimed to create a virtual experience of visiting the new store. The digital assets were therefore uploaded to both the Descentraland metaverse and the OpenSea platform, two leading NFT marketplaces. It's worth noting, however, that these assets were not available for purchase, download or reproduction, their purpose was exclusively for viewing by those attending the inauguration.

As a result, VEGAP (“Visual Entidad de Gestión de Artistas Plásticos”), a collective management organisation for intellectual property rights in Spain that represents more than 150,000 authors worldwide, sued Mango for not obtaining authorisation for the reproduction and public communication of the works in question.

The key issue was to determine the scope of the Mango Group's rights as the owner of the original paintings. In other words, whether the transformation of a physical work of art into an NFT constituted a modification of the work that could affect the author's rights, or whether, on the contrary, the ownership of a physical work conferred the right to transform it into an NFT. In this case, the question was if, by acquiring the original paintings, Mango acquired an absolute right of use and exploitation in any context, and if the use made of the works could be considered harmless, without the need for authorisation from the authors.

After careful consideration, the Barcelona court concluded that it wasn't a case of direct reproduction of the artworks, which would have involved copying them without adding new elements, but rather a transformation of the original works. These were modified by crypto-artists hired by the company to create new pieces of art that were different from the originals and had their own originality. Since these are essentially new works that modify and transform the original paintings, the rights of the artists Miró, Tàpies and Barceló, as well as those of their heirs, have not been infringed. In addition, the court recognised Mango's right to exhibit the purchased paintings without the need for authorisation from the original creators.

General Court Upholds Yannick Noah's TM Against Non-Use Cancellation

In a recent ruling of 24 January 2024 (T-562/22), the General Court of the European Union addressed a dispute concerning the genuine use of a registered European Union trade mark owned by Yannick Noah, in particular in relation to clothing.

In 2008, former French tennis player Yannick Noah registered EU trade mark No. 005620968 with the European Union Intellectual Property Office (EUIPO) in Nice Classes 18, 25 and 28, covering leather goods, clothing such as polo shirts and sweaters, as well as games and toys.

The sign featured a black "Y" with touches of yellow (top), red (left) and green (right), below which was the word "NOAH" in black letters, all framed in black.

In 2019, Noah Clothing LLC, a clothing retailer based in New York unrelated to Yannick Noah, applied to the EUIPO to revoke the trade mark, claiming that it had not been in genuine use in the European Union for a continuous period of five years for all the goods in question. The principle of 'genuine use' of a trade mark refers to actual use in the marketplace of the goods or services protected by the mark, and not merely symbolic use to maintain rights in the mark. If successful, the US-based company would therefore be entitled to use their own brand in the European market without infringing the Frenchman’s trade mark.

The EUIPO accepted the action and revoked the disputed mark for the goods in classes 18 and 25 on the grounds of lack of genuine use, but rejected it for 'polo shirts' and 'sweaters' in Class 25, as it considered that there was sufficient evidence of genuine use by Yannick Noah for mark in relation to these specific goods. Noah Clothing LLC appealed to the General Court of the European Union seeking the revocation of the trade mark in its entirety.

The legal and factual issues to be decided by the court included whether the owner's use of the registered mark in a form slightly different from the registered form constituted genuine use of the mark; whether the mark was used for goods not expressly covered by its registration; and whether the owner's marketing strategy of producing a limited edition of clothing was sufficient to establish genuine use of the mark for the goods in question, such as polo shirts and jumpers.

As regards genuine use, the main point of dispute was that most of the images submitted as evidence by Noah Clothing showed a slightly modified version of the mark rather than the registered mark. Noah Clothing argued that the addition of the capital letter 'Y' followed by a period at the bottom of the mark along with the NOAH sign, altered the distinctive character of the original mark. However, the Court found that this addition did not significantly alter the distinctive character of the mark, because the additional element was secondary in the general perception of the mark and the use of surnames is common in the fashion sector, which reinforces the reference to Mr Noah. The Court therefore rejected Noah Clothing's argument that the addition of the letter 'Y' did not alter the distinctive character of the mark.

In addition, the Court considered the use of the mark for the marketing of 'sweater vests’, which were not specifically covered by the registration in Nice Class 25. It held that that fact did not diminish the importance of that use for the purposes of establishing genuine use, especially since those clothes, like sweaters, are designed to cover the upper part of the body, they can also be classified as 'sweaters' and fall within the scope of that registration. It was therefore concluded that their inclusion within the scope of the mark did not affect the validity of the genuine use.

Lastly, it examined whether the mark had actually been used to promote "polo shirts" and "sweaters". The General Court emphasised that even minimal use may be sufficient to be considered genuine, provided that it is justified in the relevant economic sector as a means of maintaining or increasing the market share of the goods or services protected by the mark in question. In this case, while the revenue related to proved use of the trade mark was less than 100.000 euros over 5 years, this was considered enough to prove use especially since the mark had been used for the launch of limited edition, the volume of which is by definition quite reduced. In conclusion, the Court confirmed that Mr Noah had genuinely and effectively used the mark for "polo shirts" and "sweaters", which supported its decision to uphold the validity and continued registration of the mark.