A passing-off suit has been filed against telecommunications giant, MTN Nigeria Communication Limited (MTN). Suit No. FHC/L/CS/18/2018 was filed on January 28, 2018 by the Plaintiff, Mr. Femi Edwards, trading under the name Mayphem International, at the Federal High Court in Lagos, Nigeria.
The Plaintiff alleges that in 2009, it started a platform that promotes comedy under the name ‘KomicRELOADED’, but in 2010, it rebranded to Comedy+ and has maintained the brand ever since across Nigeria (including filing a trademark application to register Comedy+ in Class 41 for entertainment in July 2017).
According to the Plaintiff, the Comedy+ brand was launched with a print magazine called Comedy+ and later established an online presence including establishing a website (www.comedyplus.com.ng) and building its online social media presence.
“Leveraging on the success of the brand ‘Comedy+’, the Plaintiff went into business organizing comedy shows and concerts throughout the country…[including] a beauty pageant (in partnership with Agboyi Ketu LCDA),” the Statement of Claim states.
The Plaintiff also claims that in the years 2015 and 2016, MTN ‘supported’ a comedy show ‘LaffXpress with Mc Ayanfe’ Seasons 1 & 2 respectively, which was produced by Femi Edwards under the ‘Comedy+’ brand. MTN denies this allegation.
In 2017, MTN launched a digital video-on-demand platform called MTN ‘Comedy+’, which aggregates comedy content in the form of short videos , skits, animated shorts and series, and allows the streaming of the same by its mobile device subcribers. MTN also recently filed separate applications to register MTN COMEDY+ and MTN COMEDY PLUS as trademarks in Nigeria in classes 9, 38, and 41.
On November 29, 2017, MTN filed separate applications to register MTN COMEDY+ in classes 9, 38 and 41 at the Trademarks Registry in Nigeria. MTN also filed applications to register MTN COMEDY PLUS in classes 9, 38 and 41.
The focus of the current lawsuit is however on passing-off and not trademark infringement and so what the Plaintiff would need to prove is goodwill, misrepresentation and that it has suffered damages.
The Plaintiff further claims that in September of 2017, through his lawyers, he reached out to the Defendant complaining of the passing-off of its services and that several days after, the Defendant responded via a letter, stating that they would look into the complaint. A month later, the Defendant wrote back denying any liability but did not deny its use of the brand or trade name ‘Comedy+’.
“10. The said acts and conduct of the Defendant were at all material times and are calculated to deceive and mislead and they have in fact deceived and misled comedy artists and the general public into the belief that the digital platform of the Defendant and the shows that the Defendant ha[s] and continue[s] to produce, promote and market thereon ha[s] been in partnership or collaboration with the Plaintiff or ha[s] been with substantial input from the Plaintiff and the services of the Defendant in the belief that they have the collaboration or input of the plaintiff.”
In its Statement of Defense, MTN states that its services are different from those of Plaintiff and that it has gained notoriety as its video-on-demand service is available to millions of its subscribers on their mobile phones. MTN states that it does not advertise or market comedy shows rather it aggregates comedy shows or comedy content from different types of comedians.
9.2 MTN does not publish magazines or organize comedy shows and events and does not require collaboration or permission of the Plaintiff to provide its video-on-demand service to its registered subscribers.
MTN also states that it is of the opinion that there is no similarity between its get-up, branding and mascot when compared with that of the Plaintiff.
9.3 The get-up, branding and mascot used by MTN for its MTN “Comedy+” brand are not the same or similar to those used by the Plaintiff and in any event, the word “Comedy” as used by MTN has a generic meaning and was not coined, devised or created by the Plaintiff for the Plaintiff to exclusively assert proprietary rights over.
The Plaintiff is seeking injunctive relief, restraining the Defendant MTN and their agents from marketing under the Comedy+ brand. The Plaintiff is also seeking damages and an account of profits.
MTN is no stranger to defending itself against Intellectual Property-Related lawsuits in Nigeria and so it is going to be interesting to see how this plays out.
The case is set to come up for hearing on Wednesday, May 9, 2018 at the Federal High Court in Lagos.
Case Name: Femi Edwards (also trading in the name and style of Mayphem International) vs. MTN Nigeria Communications Limited
Suit No.: FHC/L/CS/18/2018
Date of Filing: January 9, 2018
Subject Matter: Passing-off of Comedy+
Counsel for the Plaintiff: Barrister Chuks Nwachuku
Counsel for the Defense: Barrister Fred Onuobia