Earlier this month when a federal court in Albuquerque, New Mexico barred Research in Motion from using the trademarked name BBX RIM simply changed the name of their next-generation, QNX based, BlackBerry operating system to BlackBerry 10 suffering little more than the embarrassment of not having acquired the right to use the trademark before actually using it.
RIM finds itself in another legal battle over the use of BBM, short for RIM’s 50 million user plus BlackBerry Messenger mobile IM service, with BBM Canada, an industry group of broadcasters, advertisers and ad agencies, that has been using BBM in their branding for nearly 70 years.
BlackBerry Messenger users have been informally referring BlackBerry Messenger as BBM for years, and, after RIM started officially using the acronym, has become a core piece of RIM’s brand, and is a linchpin of the company’s global expansion, so it is doubtful that RIM will just stop using BBM.
The big problem for RIM is that the company was informed that BBM “was not registerable” when they applied for a trademark back in 2010. Furthermore, Jim MacLeod, president of BBM Canada contacted RIM agreeing rebrand BBM Canada if RIM paid the costs of doing so.
After making no progress with RIM, BBM Canada filed a lawsuit alleging trademark infringement, on Aug. 12, 2010 and is seeking an injunction stopping RIM and its employees from using the term BBM, as well as damages for infringement and punitive damages.
Having become a bit of a PR nightmare for RIM, the company has released this 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.”
Reseach in Motion and BBM Canada meet in court on Jan. 11th.