Vodafone successfully opposes bad-faith VODACOM application

Nigeria

The Nigerian Trademark Office (TO) has upheld a claim by Vodafone that a local company had applied to register the mark VODACOM in bad faith. Proceedings seeking to revoke the registration by the same party in another class are pending.

Mobile telecommunications provider Vodafone owns registrations for the mark VODACOM in a number of countries including Angola, Burundi, Ghana, Kenya, South Africa and Zimbabwe. It applied to register the mark in Nigeria in Classes 9, 16 and 25 of the Nice Classification. The TO rejected the application on the grounds that a local company had already registered the same mark in Class 9 and had applied to register it in Class 16. The TO had accepted but not yet published the application in Class 16. Vodafone filed a petition with the TO claiming that:

  • the application in Class 16 ought not to have been accepted;

  • the details of the offending trademark should be struck off the register; and

  • the mark VODACOM should be registered in Class 16 in Vodafone's name.

It also brought a separate action to the courts seeking to revoke the registration in Class 9.

Vodafone claimed the following:

  • It started to use the mark VODACOM in Nigeria as far back as 1995, mainly through extensive broadcasting coverage using the print, audio and visual media, as well as distribution of various promotional items.

  • It has established a reputation in the VODACOM mark in most African countries. The mark satisfies the conditions of a well-known mark under the Paris Convention for the Protection of Industrial Property and is generally regarded as such. The local company had registered or applied to register the mark in bad faith in order to ride on Vodafone’s reputation.

  • Section 11 of the Trademarks Act precludes the registration of any trademark that is likely to deceive or cause confusion, and this was the effect of the local company’s VODACOM registration and application.

  • Section 18(1) of the Trademarks Act precludes the registration of a mark by a party that is not the rightful owner. The sign registered or applied for by the local company did not qualify as a trademark as defined in Section 67(1) of the Trademarks Act as the company was neither the mark’s owner nor its registered user.

The TO (i) revoked the acceptance notice with regard to the prior application in Class 16, and (ii) accepted the mark in Vodafone's name in that class. The revocation action for the registration in Class 9 is pending in the courts.

Folasade Laniyan, Jackson Etti & Edu, Lagos

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