A judge at a Federal High Court passed a decision on June 6, 2022, that the word “Ride” can’t be trademarked as it’s a generic term that is commonly used, rejecting the multimillion birr claim Hybrid Designs Plc had brought against ZayTech IT solutions Plc.
Two of the pioneers of ride-hailing service in Ethiopia have been at it in court for the past two years after Hybrid Designs sued ZayTech for infringement of its trademark.
The development, which is one of the multiple legal suits instigated by Hybrid Designs against other ride-hailing platforms over the use of the word Ride, has been a serious issue in the emerging sector.
In its claim, submitted at the beginning of 2020, Hybrid argued it was the first company in Ethiopia to introduce Ride-hailing services as well as the technology behind it.
In anticipation that other firms would join this line of service, the plaintiff says it believed it needed to distinguish itself from other rival businesses that might spur up in the future and trademarked the English word RIDE with its Amharic equivalent under it in black and white, registering it in 2015.
Hybrid stated that it worked hard to build a reputation and name for its business, spending 15.7 million birr in marketing to gain the goodwill it had today. The plaintiff added that after three years RIDE was introduced, ZayTech IT Solutions developed a similar transport services technology platform and joined the sector.
The defendant used a trademark, ZayRide, adding the word Zay before Ride, a decision that Hybrid claims was made deliberately to look similar to its business.
By using this trademark, Hybrid claimed ZayTech obtained an inappropriate gain from its clients and benefited from the goodwill of RIDE without its consent.
Hybrid also sued the Intellectual property office, together with ZayTech, after it failed to pass a decision in favor of it when the issue was flagged.
The Office, as the dedicated government body to register trademarks as well as settle trademark disputes, ruled that the use of ZayRide by ZayTech did not violate the trademark rights of Hybrid.
In its claim, Hybrid requested the High Court for ZayTech to stop using a similar term as RIDE for its ride-hailing business and pay the 15.7 million birr Hybrid had spent promoting its brand.
In its second claim, Hybrid asked the court to order ZayTech to pay the 19.4 million birr it had gained using ZayRide as its trademark as it believed the income was the result of its misleading appearance to RIDE.
Hybrid also asked for the Intellectual property office to be responsible for the damages ZayRide caused as it failed to solve the problem and be jointly and severally liable for the damages.
ZayTech IT Solutions, in its defense, stated that Hybrid Designs does not have a legal right to prohibit others from using the word Ride. ZayTech argued that according to Trademark Registration and protection proclamation, words that are familiar and used commonly in communication serving as symbols and identification could not be registered as trademarks.
“If a word that is commonly used in communication is to be used as a trademark, a distinctive business logo must be added to the word,” argued the defendant. Because the word “Ride” is a common communication term in the transport sector and is not for sole private usage, ZayTech requested the court to dismiss the case.
The second defendant, the intellectual property office, argued that it did not only act in its legal mandate but was also right to dismiss Hybrid’s claims submitted to the Office.
The presiding judge over the case sought to look at the case whether or not the two companies, who are involved in a similar business, had similar trademarks (name and logo).
The court believed that the two trademarks of the company were different except for the word ride and looked into whether or not there was foul play.
The court, who referred to the dictionary definition of the term ride, stated that the word is a common English word used related to travel, and in Ethiopia, the word was popularized with the coming of meter taxis.
In the ruling, the Federal High court took notice that besides RIDE and ZayRide, there are several other businesses established giving similar services to the two.
Many of these businesses use a distinguishable name, adding it to the word “Ride.” Beza Ride, Zebra Ride, and Fetan Ride are some of the platforms that give similar businesses.
The court further stated that in Ethiopia, it is common to take English words and use them as a name for businesses that give services related to the terms, such as HOSPITAL as a name for a company providing health services, HOTEL as a name for an establishment providing accommodation, and Real Estate as a name for a business involved in buying, selling or investing in homes.
The judge believed that similar to these cases, meter taxi service providers are generally called ride in the country.
“Customers distinguish businesses in this line of service not by only their name but by identifying their logo, phone application, and short code number. Even though the plaintiff used the word first, the word is common with those engaged in transport services as well as being a generic term. Thus, according to law, the word “Ride” cannot be registered as a trademark,” reads the court documents seen by Shega.
As a result, Intellectual Property Office didn’t register the sole name “Ride” as Hybrid’s trademark, but together with its Black and white logo.
The court, which dismissed the claim that there could be an exclusive trademark right on the word RIDE, instead sought to compare Hybrid designs’ entire trademark (both name and logo) with ZayRide’s name and logo, which it found to be distinguishable.
The court ruled that ZayTech IT solutions, by using the trademark ZayRide for its ride-hailing business, did not violate the trademark rights of Hybrid Designs and should continue its service under the name. The court also asserted that the defendants should not pay any damages.
Hybrid Designs has also sued Beza Ride, Seregela Ride, Fetan Ride, and Habesha Ride for similar issues. It is to be recalled that three months ago, another court ruled Seregela Ride could not use the word Ride in its trademark.
Observers expect these cases to keep on going until the Cassation Bench passes a final, binding decision on the issue.
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