RIM hit with BBM trademark lawsuit [Update: RIM responds]

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RIM recently had to change the name of their upcoming platform update from BBX to BB10 due to a preexisting trademark, but it looks like one of BlackBerry’s more well-established features may be coming under similar fire. BBM Canada is a non-profit business intelligence company that has been around since 1944 gathering TV and radio metrics for advertisers, and CEO Jim MacLeod says “we want our name back”. MacLeod had previously offered to rebrand BBM Canada, so long as RIM covered the cost, but after several failed attempts to meet and negotiate with RIM execs, they filed their suit on August 12, and will be seeing RIM in court on January 11 for the initial hearing. Ultimately BBM Canada is hoping to place an injunction on RIM using the term, as well as fines for infringement and punitive damages.

While mobile and online aren’t a big part of BBM Canada’s business right now, it’s within their reach if they ever wanted to help advertisers get into the app space. The term “BBM” has been in parlance for awhile now, but RIM didn’t really start using it themselves until their signature BlackBerry Messenger app became a focus of their marketing efforts a little over a year ago. BBM Canada earned the name from its initial branding as the “Bureau of Broadcast Management”.

I could see how bothersome it might be trying to operate as BBM Canada, and always getting calls from various partners that are actually trying to get a hold of RIM. On top of that, BBM Canada did lay the first claim on the name, tried negotiating in good faith, and RIM would have done some cursory Googling due diligence before launching into their marketing campaign, and must have simply ignored these BBM Canada guys. The worst-case scenario is that RIM has to pay up, and start marketing BlackBerry Messenger rather than BBM; best-case scenario is RIM negotiates for the previous offer and gets to keep using BBM, so long as they pay for BBM Canada’s fees.

Man, poor RIM. These guys just can’t get a break.

Update: RIM has issued a statement on the matter…

“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.”

[via Globe and Mail]

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