African intellectual property law, practice and policies. This weblog provides news, information and comment on IP law, practice and business deals right across Africa. Ce blog propose des actualités, informations, et commentaires sur la législation et la pratique en matière de propriété intellectuelle et de droit des contrats d'affaires en Afrique. For some insight into the origins of this blog click here.
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.
of the meaning
ascribed to “Yahoo Yahoo” in Nigeria (“Yahoo Yahoo” is another name for
“internet scam” as shown 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
(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.
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
For a consumer sued for defamation of trademark,
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.