Mr. Macaroni on an IP bicycle!
Remember the Mr Macaroni riding on a bicycle back in primary school days? Yeah, he is now into skits and has actually made it quite big. You are not alone dear, everyone is shocked as well (and lest I forget, please ignore those conspiracy theories about the name being Mark Anthony. Some people are just out to soil our childhood fun).
It happened that Mr. Debo Macaroni, the “Ooin! You’re doing well” crooner was greeted with a shocker on the first day of March. On his official Twitter page, he addressed a mail sent by Wema Bank to a customer in which his catchphrase was used alongside the picture of an unknown individual (definitely not him and arguably, not presented to be him). He lamented that such act is deceitful and fraudulent. He also claimed that the catchphrase was his intellectual property. Quite recently too, word got out that Piggyvest used the catchphrase, albeit partially, leaving out the “ooin.”
Given the recent spate of comments on Twitter, things could get quite confusing, particularly with the long list of non-expert advice available on the bird app. The pertinent question on every lip and keypad is whether Mr. Macaroni has a legal right to the catchphrase and consequently, sue.
Taking this one step at a time, a trademark is an IP asset that protects signs, symbols, letters, numbers, smell, shapes, colours or expressions that distinguishes a product or organization or individual from others. A service mark performs a similar function for services and service providers. Catchphrases are expressions that can be trademarked on the condition that they are not mere words; they must be used in connection with the aim of identifying a product or service. The effect of a trademark is to grant exclusive rights to use and gain commercial profit from the use of the catchphrase.
Overtime, Mr Macaroni has built his brand around the catchphrase and undeniably gained some level of commercial benefit through endorsement and advertisement deals. He can then be said to have a right over the use of the catchphrase against unauthorised use by individuals or enterprises. But just before you sue Wema Bank in your mind, some deep thought must be given to whether he had registered the catchphrase or not.
A trademark is not effective without registration. An action will most likely fail if he has not registered the trademark subject to some exceptions. Nigeria operates the first to file trademark policy as against the first to use doctrine. That is, the first to register a trademark necessarily has rights over it against the first user. However, the rights of the owner of an unregistered trademark which proves to be “identical or confusingly similar” may prevail over that of the owner of the registered trademark in a case where the owner of the unregistered trademark proves that he had been using his mark continuously for some time before the grant of the registered trademark. The Supreme Court decided similarly in American Cyanamid Co. v. Vitality Pharmaceutical Ltd (1991) 2 NWLR (Pt.171) 15
Moreover, an unregistered trademark can be protected where evidence of use of and goodwill acquired from a trademark can be established. Under common law, this is proof of vested rights to the mark and an owner that has continuously used and acquired relevant goodwill can bring an action against any infringement and maintain ownership of the mark.
In this instance, it is unsure whether Mr. Macaroni has successfully trademarked the phrase. If he has, that makes legal action very easy for him. If he has not, he can seek remedy under common law principle for unregistered trademarks if he is convinced that the requirements are met in his case. Section 3 of the Trade Marks Act allows him to successfully bring an action under passing off at the Federal High Court. He may also file a cease and desist letter with evidence of his use and goodwill of/from the trademark.
This author believes that Mr. Macaroni has a good case provided his action centres on the use of “ooin, you are doing well” as an entire phrase. Mere “you are doing well” as a catchphrase is not considered distinctive for a performer’s brand. The combination of the distinctive and novel “ooin,” ticks every box necessary for a valid trademark. On a final note, it ought to be commonly accepted by now, especially with the recent rise in awareness of Intellectual Property Rights, that the use of a symbol or expression of another person or enterprise without authority is wrongful and legally actionable. Living off someone else’s intellectual property and goodwill is just not freaky enough.
IPTLC RESEARCH TEAM