Friday, 16 January 2015

“Yahoo Yahoo” in Nigeria – Trademark Dilution or Defamation?

Since starting her usual daily drive to work in 2015, this Leo has heard the new MTN Nigeria’s internet advert (or “Better Me Bundle”) on her car radio. In the advert, a father accuses his son of engaging in “yahoo yahoo” on the internet but the son ends up convincing his father that far from engaging in “yahoo yahoo”, he is using the internet to check his examination results. The son also lists other useful activities that may be carried out on the internet and the father, convinced, asks to be taught how to use the internet.  

MTN Better Me
Aware of the meaning ascribed to “Yahoo Yahoo” in Nigeria (“Yahoo Yahoo” is another name for “internet scam” as shown here, here, and here) as well as the popularity of Yahoo as a trade mark, this Leo wondered what Yahoo could make of such negative connotation involving its mark.

Most companies, including Yahoo, warn users of their trademarks (for example, see here and here) against using the company’s trademark in a manner that disparages such company.  Such derogatory use of trademark may amount to dilution by “tarnishment” or defamation of trademark. According to the International Trademark Association (INTA), the distinctiveness of a famous trademark may be weakened by inappropriate or unflattering associations regarding the mark.

While there is no Nigerian case on this issue (as far as this Leo is aware), whether the fact of associating “Yahoo” with internet scam or fraud amounts to a dilution of the Yahoo trademark by tarnishing its reputation for use in lawful exercises will depend on several factors including:
(a)   Whether Yahoo is a famous or well-known mark (This Leo takes this as a given)
(b)   Whether there was actual dilution (for example, has the term “Yahoo Yahoo” prevented or adversely affected the use of Yahoo Products and Services by consumers in Nigeria?)

These factors, taken from the general application of US law on trademark dilution, are quite similar to the factors that may be necessary to sustain a case of trademark defamation. In both cases, the trade mark is used or referred to in a manner that reduces its reputation in the minds of the public.

One of the Yahoo marks
Yahoo expressly states that it does not grant permission to any person to use the Yahoo trade mark or related marks “in a manner that is misleading, defamatory, libelous, obscene, infringing or otherwise objectionable”. It is up to Yahoo to evaluate any use of its mark and to decide whether such use violates the stated restrictions.

Readers, what are your thoughts on possible actions by Yahoo?

For a consumer sued for defamation of trademark, see here
For a discussion on product disparagement and trademark law, see here and here.
For a comparison of Yahoo and Google users in Nigeria, see here.

No comments: