By Oliver Smith on Tuesday 2 August 2022
UK fintech forced to defend its trademark again, just months after fighting off Klarna.
Less than a year after VibePay CEO and founder Luke Massie defended his fintech’s brand against Klarna, now Massie is on the defensive once again, this time against $8bn Japanese conglomerate Rakuten.
On Sunday Massie’s lawyers sent a cease and desist to Rakuten’s messaging app Viber just days after its launch of payments in Europe under the Viber Pay brand.
In the letter, seen by AltFi, VibePay’s lawyers wrote that the use of Viber Pay as a brand would “risk confusing and misleading the public into believing that the services supplied by your client are from, associated with, authorised by, or endorsed by, our client, when they are not.”
VibePay has also filed an application to have Viber’s “Viber Pay” trademark (filed prior to Viber Pay’s launch in 2021) be invalidated by the EU’s Intellectual Property Office due to the similarities with its own trademark.
“Viber has made it pretty clear that they want to bring the product to the UK, we just think there's clear confusion for the end consumer,” Massie told AltFi.
Viber is one of Europe’s largest messaging apps, with around 250m monthly active users, and is a subsidiary of Rakuten, the eCommerce and online retailing group listed on the Tokyo Stock Exchange at an $8bn valuation.
Last week Viber’s CEO Ofir Eyal announced the launch of Viber Pay in an interview with TechCrunch, telling the publication that Viber Pay’s first market would be Greece, a “purple country” (the colour of Viber’s app) where 91 per cent of smartphones have Viber installed.
“We've started with the launches in Greece and Germany and plan to expand the service worldwide,” Viber added in a LinkedIn post.
Viber Pay, built with the help of London-based payments provider Rapyd, is part of a plan to aggressively shift Viber into being a messaging and payments app, a move which would see it directly compete with VibePay.
For Massie, the announcement was a shock, especially given the founder had spoken at “great lengths” with Viber’s CEO Eyal and Viber's VP Head of Fintech Ritesh Shah regarding the potential for trademark infringement, yet in Massie’s understanding Viber “decided to launch regardless… a clear infringement and I want to do what I can to protect our position, against another huge organisation.”
Indeed this isn’t the first time the founder had been forced to defend his trademarks.
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.
At the time there was the suggestion that Klarna might look to buy VibePay in order to acquire the trademark, and Massie hinted that an acquisition would be the only way Viber would be able to continue using his trademark.
“I can't see where they go with this now... we were discussing with Klarna them potentially buying VibePay and integrating it, and that's where this may end up. Viber might have to either stop using [the brand] or purchase us, because there's a lot of similarities with our products,” added Massie.
In response to AltFi's request for comment, a Viber spokesperson said: "Viber was surprised to learn that Vibe Pay Limited filed an opposition at the UK Intellectual Property Office challenging Viber’s trademark application."
"Viber has been being trademarked for over a decade and as Viber’s millions of UK and Europe users are aware, Viber has an impressive reputation in the UK, the EU, and worldwide since it was founded in 2010 prior to the existence of Vibe Pay Limited."
The spokesperson described Viber Pay as "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".