Puma vs Puma case – Streaming password sharing

PUMA

In 2012, the South Korean company DN Solutions Co. Ltd sought to register as a European Union Trade Mark (EUTM) the figurative sign “PUMA” designating goods in Class 7 of the Nice Classification, namely “Lathes; CNC (computer numerical control) lathes; machining centers; turning center; electric discharge machine”. 

An opposition against the registration of the sought trade mark was filed by Puma SE, the owner of the earlier figurative international trade mark “PUMA”, which designated goods in the following classes: 

–        Class 18: ‘Leather and imitation of leather, namely bags, trunks and suitcases, carrying bags, travel bags, especially for sports equipment and sportswear’;

–        Class 25: ‘Clothing, including boots, shoes, slippers and booties, especially clothing and sports, leisure and exercise shoes’;

–        Class 28: ‘Games, toys, apparatus for physical exercise, gymnastics equipment and sport, including sport balls’

The grounds on which the opposition was based were those referred to in article 8.5 of the European Union Trade Mark Regulation (EUTMR), - i.e., trade mark with reputation - against the EUTM application and against all the goods designated. 

For this article to apply, the earlier trade mark needs to fulfill the following requirements: 

-       To have a reputation in the Member States where it is registered. 

-       EUTM applications could not be granted if they are identical or similar to the earlier trade mark, even when the goods and services applied for are not similar to the ones covered by the earlier registration. 

-       When “the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark”.

The Opposition Division of the EUIPO and at a later stage the Boards of Appeal (BoA), rejected the opposition arguing that Puma SE did not prove the reputation of the earlier trade mark within the relevant public in the Member States concerned. 

Puma SE lodged an appeal before the General Court (GC), arguing that the BoA erred in finding that there was no link in the mind of the relevant public between the mark applied for and the earlier mark. Moreover, there was detriment to the distinctive character of the earlier mark and unfair advantage taken by the mark applied for. 

As regards the link produced by the trade mark applied for in the mind of the relevant public, the GC pointed out that although the signs at issue were almost identical, the goods covered by the sought mark belong to a specific sector (machine tools), which were very different from the goods covered by the earlier trade mark. Puma SE was not able to demonstrate that the mark applied for could have caused a link in the mind of the relevant public. 

Furthermore, the Court considered that, as no link was produced in the mind of the relevant public by the contested mark, its use would not constitute “taking unfair advantage or be detrimental to the distinctive character or the repute of the earlier mark”.

Consequently, the GC dismissed the appeal lodged by Puma SE and confirmed the BoA’s decision, meaning that the EUTM for which registration was sought could be registered.  

PASSWORD SHARING

Do you share your Netflix account with friends? If so, this article might be relevant for you!

The United Kingdom Intellectual Property Office (UKIPO) has recently released new guidance on piracy. Usually, the problem with piracy consisted in accessing copyright protected content, like films or series, through illegal streaming boxes or hacked Fire Sticks, without paying a subscription.

However, according to the UKIPO’s guidance, sharing the password of online streaming services in order to have access to copyright protected content without paying the relevant subscription, may be considered as copyright infringement. 

Password sharing has become a common practice among users that are not living together in order to have access to online streaming services, such as Netflix. 

These users could therefore face prosecution, as there are provisions in civil law and criminal law that are applicable to users who seek to access copyrighted content without paying for it. Furthermore, these provisions are also foreseen in the terms of service of those online streaming platforms, thus users could also face civil actions for contractual breach. 

At the moment, it does not look like these online streaming services will take legal actions against users that share their passwords. However, it is a practice that is likely to be banned.