On January 11, Research in Motion went head to head with BBM Canada to defend against BBM Canada’s allegations of trademark infringement over the use of the mark “BBM” in connection with RIM’s BlackBerry Messenger service.
The Federal Court of Canada heard hours of legal argument from both parties and has reserved judgment pending written decisions.
BBM Canada, established as the Bureau of Broadcasting Measurement in 1944, is seeking an injunction to prevent RIM from using the BBM mark in Canada, plus $15 million in damages ($5 million of which are punitive).
Under Canadian trademark law, identical marks are entitled to co-exist, provided that such marks represent wares or services in different channels of trade. The general test is whether the average Canadian consumer would confuse one mark with the other. For example, in 2006, the Supreme Court of Canada held that there was no material likelihood of confusion between a Montreal-based restaurant called “Barbie’s” and Mattel, Inc.’s iconic “Barbie” dolls.
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The primary question to be answered by the court is whether the marketplace for BlackBerry Messenger and BBM Canada overlap in any way. RIM has steadfastly held that it and BBM Canada: “…are in different industries and have never been competitors in any area. 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.”
Generally speaking, the target markets appear to be quite different. BBM Canada is engaged in providing “broadcast measurement and consumer behaviour data to Canadian broadcasters, advertisers and agencies”. RIM has developed BlackBerry Messenger as a piece of proprietary software in its portable telecommunications devices for consumer use. However, that does not seem to have stopped consumers from being confused, as BBM Canada alleges it has received thousands of telephone calls requesting information about BlackBerry Messenger.
RIM clearly feels confident in its case, as it has not yet settled the dispute with BBM Canada. However, a settlement is still possible between the parties before the judge releases his written decisions, which should be within a matter of months. BBM Canada has indicated a willingness to change their name, for a price.
As it considers whether or not to settle, RIM must also be considering its recent legal battle over the BBX moniker for its operating system, which it now must refer to as BlackBerry 10, pending a final judgment in a separate dispute.
Timothy W. Murphy, LL.M, is the principal of Murphy & Company, a business law practice based in Vancouver, Canada, that delivers comprehensive legal advice in the technology and finance sectors. Mr. Murphy articled with a leading national law firm, has international experience with Freshfields Bruckhaus Deringer LLP in Paris, France, and, until September 2010, acted as in-house legal counsel for a multinational software company. Mr. Murphy holds a master’s degree in law from McGill University.
For more information, or to contact Murphy & Company, email: [email protected] or call (604) 360-7014.
Visit his website at www.murphyandcompany.ca
Vancouver lawyer Audrey Lim contributed to this article.
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