Safaricom has taken rival telecommunications company Airtel to court on claims that it is infringing on its M-Pesa trademark by including its symbols on its advertising billboards.
Safaricom has filed pictures in court that it claims show evidence of Airtel Kenya’s usage of signs that are identical to two of its registered M-Pesa trademarks for the promotion and marketing of Airtel Money, its mobile cash transfer service.
“Airtel has infringed and continues infringing on the plaintiff’s trademark number 60093 by printing and advertising on retail outlets, boards and plates for the promotion and marketing of its Airtel money,” says Safaricom in court documents.
The telco accuses Airtel of riding on the goodwill and extensive market share of M-Pesa, which has over the years grown and taken a commanding lead over Airtel Money.
Safaricom’s in-house counsel Daniel Ndaba says in court documents that one of the infringed M-Pesa logos was registered as trademark number 60093 for use in respect of advertising and business management administration while the second M-Pesa logo registered as trademark 62612 is for use in respect of clothing, footwear and headgear.
The 60093 trademark has a phone with a note on it between the letters M and Pesa of the logo while the 62612 trademark has the words joined with a hyphen.
The two M-Pesa logos are used for branding of the 85,756 retail outlets that provide Safaricom’s mobile money transfer services.
Mr Ndaba said Safaricom had written a cease and desist letter to Airtel on May 15 over the use of their logo by Airtel Money agents after investigations showed that it had been infringed in 69 outlets across the country.
On May 19, Airtel wrote to Safaricom claiming that it was not aware of the infringement of registered trademarks but indicated that it would undertake investigations and revert on the same in four days.
Airtel later wrote an email to Safaricom seeking a way forward on the shared agents branding on May 27.
“The email confirms Airtel’s intention to misrepresent to the consumers of the competing mobile money transfer services that Airtel and Safaricom are engaged in a common association in rendering their respective services and that the two are one and the same,” says Safaricom in court documents.
The conflict comes barely a year after Safaricom was forced by the Competition Authority of Kenya to open up its M-Pesa agents network to rivals in a bid to ease their market penetration.
The July 2014 announcement meant investors could run M-Pesa services alongside those of Safaricom’s rivals such as Airtel Money and Telkom Kenya’s Orange Money under the same roof.
Safaricom previously controlled a majority of the mobile money transfer business and its competitors claimed that the exclusive agent deals had helped to cement its dominant position.
High Court judge Francis Gikonyo had on June 9 issued a temporary injunction restraining Airtel from infringing on the two trademarks by printing or advertising on retail outlets boards or other advertising media for the promotion of Airtel Money until both parties were heard on Monday.
Both Safaricom and Airtel told Justice Gikonyo that they had started discussing the matter with a view to settling it out of court.
The judge gave the parties 14 days to negotiate, during which the temporary injunction against Airtel would be upheld.