Victims of their own success: Has M-PESA become a generic trademark?
- CIPIT |
- December 11, 2019 |
- Intellectual Property,
By Caroline Wanjiru
On 27th November 2019 the President of the Republic of Kenya released the Building Bridges Initiative Report (BBI Report) which is a document prepared and compiled by the Building Bridges to Unity Advisory Taskforce (Taskforce). The mandate of the Taskforce included collecting information from Kenyans on various national matters. To participate in this process, we have opened our Jadili platform inviting comments on the BBI Report to ensure our voices count. To comment or discuss the report please visit the Jadili Website and make your voice count. This post is not about the BBI Report though but on the content of the said report.
A list of abbreviations and acronyms assists the reader to understand how the words have been used and applied in the document. On page 6 of the report under abbreviations and acronyms, there is reference to ‘MPESA-Mobile Money Transfer Service in Kenya’. This reference presupposes that M-Pesa is not proprietary and does not tell the reader who owns it, if any. It leaves room for open interpretation for instance that there M-Pesa is a Kenyan service-owned by Kenya; that there are no other mobile money transfers in Kenya; presupposes that it is a public good, and not related to an individual. These statements may be correct and has associated legal implications for M-Pesa.
So why is this abbreviation/acronym significant?
M-PESA is a mobile-based money transaction service offered by Safaricom. It is proprietary to Safaricom. The service, which is available to all Safaricom subscribers, allows them to deposit, transfer, withdraw and pay for goods and services using a mobile phone. M-Pesa word is a derivation of the words ‘mobile money’ put together as M for mobile and Pesa (Swahili) for money. M-Pesa fame has continuously grown since its launch and has won several accolades especially within the country. See the success of M-Pesa story here. Is this why the BBI Report referred to it?
As mentioned, M-Pesa is owned by Safaricom one of the communications companies in Kenya. As a proprietary right, Safaricom has fought legal battles to protect its rights in the word. However, in 2014 Safaricom removed the exclusivity clauses in all its M-Pesa Agents’ contracts allowing the latter to operate other mobile money transfer services owned by other communications companies in Kenya. The exclusivity removal was a few months shy of the decision by Competition Authority requiring the removal of the exclusivity. This means that an ‘M-Pesa Shop’ can be offering other services other mobile money transfer services. From this, the question becomes, has the word M-Pesa been used so frequently that it has become generic for mobile money transfer service as referred to in the BBI Report?
In ordinary Kenyan conversations, it is possible to hear Kenyans use the word M-Pesa loosely to mean transfer of money on their mobile phones. We pose the question, how many of us have used the following phrases on column A to mean the phrase on column B?
|How much |
should I Mpesa
|Asking how much to transfer to another on |
|Can I M-Pesa |
|Asking if payment can be done on the mobile|
platform, mostly as an alternate to cash
|I will M-Pesa you the |
|Confirming that money will be sent on the |
|Who should we |
|Asking who should be the recipient of the |
monies on the sent on the mobile platform
|When is the deadline to M-Pesa?||When is the deadline to transfer monies on the mobile platform|
|I will M-Pesa you from |
|Monies will be sent from a bank account |
but to a mobile phone
These are a few examples. The phrases under column A utilize the word “M-Pesa’ as a verb to mean ‘transfer of monies over a mobile platform’. Whilst Safaricom owns Mpesa, there are admittedly other platforms owned by the other communications companies whose services in this instance fall under column A. The last phrase has been used to mean that the transferor will send monies from their bank account over the mobile platform and/or that they will be physically in the bank when transferring the monies.
The BBI Report, a document authored after collecting views nationwide and without referring to Safaricom has used the word M-Pesa as a verb to mean mobile money transfer service in Kenya. On Page 113, the Report explains that ‘M-Pesa enables cash and voucher transfers in every part of the country’. Whilst this is not synonymous to the above uses, one wonders why the authors of the Report could not attribute the platform to Safaricom.
Is it not a good thing that M-Pesa is so used?
Yes and no. It is a good thing that as a brand, M-Pesa has stood out; has been associated with great achievements and has made Kenyan lives better. However, the above common uses of the word makes M-Pesa synonymous with mobile money transfer. It risks it becoming generic or associated with the ‘act of transferring money over a mobile platform’. Should this happen, there are several risks that come to fore:
- The word loses its distinctiveness, which is one of the requirement under law for the registration of trademarks in Kenya. See section 2 of the Trademark Act.
- If registered as a trademark for mobile money transfer, the trademark becomes generic, descriptive, and susceptible to removal from the register of trademarks on these grounds.
- All other communication companies, financial institutions and generally anyone offering ‘M-Pesa-like’ services become entitled to use the word to describe their mobile money transfer platforms. The trademark now falls in the public domain.
- Safaricom loses the proprietary rights in the word M-Pesa and therefore unable to enforce any trademark rights against any third party who uses the word M-Pesa for mobile money transfer.
- Inclusion of the word M-Pesa in dictionaries- English and Kiswahili as a verb meaning to ‘transfer money over a mobile platform’ and its equivalent in Kiswahili.
In the past, words such as escalator, aspirin, cellotape, Xerox, kerosene were all once trademarks with private rights vested in individual proprietors. Today, these are common words used daily but not to describe the specific goods or services despite that being their original purpose. These words on their own cannot be registered as trademarks as they would be considered descriptive.
In 2011, Twitter had a similar battle over the word ‘tweet’ where the word was challenged for being used to refer to ‘advertising in connection with Twitter and therefore incapable of serving as a mark owned by Twitter Inc. Even though, this matter was eventually settled out of court, Twitter in its returns to the US Securities and Exchange Commission, reported one of their risks to be that one of its trademarks could lose their value. They ‘risked that the word ‘tweet’ could become so commonly used [generic] that it becomes synonymous with any short comment posted publicly on the internet’. Had this happened, Twitter Inc. could have lost the proprietary rights that came with the trademark ‘tweet’.
In conclusion, we pose the question: Is M-Pesa synonymous to transfer of money over a mobile phone platform in Kenya? Will it become a victim of its own success?
The author would like to recognize open conversations on the subject she had with Mr. Mwangi.
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