Looks like that lawsuit that forced RIM to rename its new operating system from BBX to BlackBerry 10 won't be the only name-related litigation that the firm encounters this year. Canadian broadcasting company BBM Canada has sued RIM over alleged trademark infringement over the manufacturer's use of the term "BBM," which it's adopted as a nickname for its BlackBerry Messenger service. BBM Canada (the BBM stands for Bureau of Broadcast Management) has been in existence since 1944 and has been using "BBM" in its logo for over 60 years. RIM has applied for the trademark to the name BBM in the past, but was reportedly told by the Canadian Intellectual Property Office that the term “was not registerable.” “We want our name back,” said Jim MacLeod, president and CEO of BBM Canada. “I find it kind of amazing that this wouldn’t have been thought about before they decided to use the name. The same thing goes for BBX.”
RIM has responded to the suit, saying that the BBM term had "already been organically coined and widely used" by fans of the service when RIM began to adopt the acronym last year. The company added that the messaging service and the services offered by BBM Canada "clearly do not overlap" and can co-exist legally under Canadian trademark law. RIM has asked the court to dismiss BBM Canada's claims. Lastly, RIM claims that its application to the CIPO for the trademark to the name BBM is still pending, and the firm is confident that its registration will be approved. The full statement from RIM is available at the bottom of this post.
As I'm sure many have noticed, RIM's had it pretty tough as of late, including being involved in the aforementioned BBX lawsuit and having to break the news that its next generation BlackBerry 10 smartphones won't be out until late next year. This new lawsuit certainly isn't helping RIM to end 2011 on a high note, although some might argue that the company brought the case upon itself by actually adopting the BBM acronym in its advertising. A hearing in the suit is scheduled for January 11th, so luckily we don't have long to wait to begin to see how this one plays out.
"Since its launch in July 2005, BlackBerry Messenger has become a tremendously popular social networking service. In 2010, RIM started to formally adopt the BBM acronym, which had, at that point, already been organically coined and widely used by BlackBerry Messenger customers as a natural abbreviation of the BlackBerry Messenger name. The services associated with RIM’s BBM offering clearly do not overlap with BBM Canada’s services and the two marks are therefore eligible to co-exist under Canadian trademark law. The two companies are in different industries and have never been competitors in any area. We believe that BBM Canada is attempting to obtain trademark protection for the BBM acronym that is well beyond the narrow range of the services it provides and well beyond the scope of rights afforded by Canadian trademark law. RIM has therefore asked the Court to dismiss the application and award costs to RIM. Further, for clarity, RIM’s application to register BBM as a trademark with the Canadian Intellectual Property Office (CIPO) is pending and we are confident that a registration will eventually issue. The inference by BBM Canada that CIPO has refused RIM’s BBM trademark application is quite frankly very misleading."
