RIM has been hit with another trademark-related lawsuit. The company has already surrendered its efforts in using BBX for its QNX-based BlackBerry 10 platform, but this time around the target is its use of BBM for its BlackBerry Messenger service.
A non-profit business intelligence company called BBM (Bureau of Broadcast Management) Canada is bringing the case against RIM. The company has been in business since 1944, gathering TV and radio metrics for advertising and its CEO Jim MacLeod had previously approached RIM, offering to rebrand if RIM would cover the cost.
Negotiations fell through and BBM Canada filed its suit on August 12 with the initial hearing scheduled for January 11. McLeod says “we want our name back.” The BBM name wasn’t adopted by RIM until over a year ago when its BlackBerry Messenger app became a focus of its marketing efforts.
In response to the lawsuit, RIM has issued the following statement:
“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.”