Japanese conglomerate Rakuten is facing a further setback in its plan to launch payments on its Viber messaging app under the "Viber Pay" brand after the European Union’s Intellectual Property Office (IPO) accepted an application to have its trademark invalidated, AltFi can exclusively reveal.
The application was made by UK fintech VibePay, whose CEO and founder Luke Massie is fighting to defend his trademark "VibePay" against confusion with Rakuten’s "Viber Pay".
Massie’s lawyers last week sent Viber a cease and desist calling on the subsidiary of Rakuten to immediately stop using the "Viber Pay" brand, as well as filing paperwork to have the trademark removed.
Now that the EU’s IPO has accepted Massie’s request for invalidity, Rakuten has until 6 October to respond with evidence that defends its trademark.
This deadline could be extended by up to two months should Rakuten request an extension.
Rakuten on Friday also responded to VibePay’s cease and desist, sending a without prejudice letter calling for the two sides to discuss a possible agreement.
It’s unclear how VibePay plans to respond to this request, but in an interview with AltFi last week Massie hinted that he’d be up for negotiating, possibly going so far as to putting a potential acquisition on the table
"Viber might have to either stop using [the brand] or purchase us," the CEO said, "because there's a lot of similarities with our products."
Massie also revealed that he’d spoken at "great lengths" with Viber’s CEO Eyal and Viber's VP Head of Fintech Ritesh Shah regarding the potential for trademark infringement prior to the Viber Pay launch.
It’s not the first time VibePay has been forced to defend its brand.
In 2021 VibePay took legal action against Klarna’s plans to launch its Vibe rewards programme here in the UK, which eventually resulted in the buy now pay later giant dropping the brand name.
In a comment to AltFi last week made prior to the IPO’s decision, a Viber spokesperson called Viber Pay "a natural evolution of Viber’s fintech journey that started more than five years ago, prior to Vibe Pay Limited’s existence" and added that Viber "will continue to roll out the service [Viber Pay] to more countries".
Source: altfi.com-Oliver Smith
Editor: IPR Daily-Selly