Message Delivered, But Not Received: BBM Canada Loses Case Against RIM

Message Delivered, But Not Received: BBM Canada Loses Case Against RIM

When hearing the word BBM, most people reach instinctively for their BlackBerry, and its instant messaging service, BlackBerry Messenger. However, there is also a company called BBM Canada, formerly known as the Bureau of Broadcast Measurement, which provides impartial ratings data and analysis to Canadian broadcasters and advertisers. BBM Canada sued Research in Motion (“RIM”), the maker of BlackBerry, for using the term “BBM”, since BBM Canada had trademarked the acronym. They claimed that RIM’s use of the initials “BBM” to refer to BlackBerry Messenger led to confusion and dilution of some of BBM Canada’s trademarks, including the trademark of the acronym “BBM”.

Some may find a parallel to the 2002 case of the World Wide Fund for Nature suing the World Wrestling Federation for use of the trademarked acronym, “WWF”. In that case, both companies were using the same acronym, but operated in vastly different markets – the World Wide Fund for Nature was a charity that solicited donations to support environmental causes, whereas the World Wrestling Federation was a business that organized professional wrestling matches. However, in the “WWF” case, a prior agreement existed between the two organizations regarding the use of the trademark. The English Court of Appeal held that the World Wrestling Federation had violated that agreement, causing the company to change its name to World Wrestling Entertainment, or “WWE”.

In the “BBM” case, no prior agreement existed between BBM Canada and RIM. BBM Canada registered the trademark “BBM” in 2007, in the categories of market research services and advertising services, among others. RIM applied for a trademark of “BBM” in 2009, in association with several services, including marketing and advertising. The Canadian Intellectual Property Office raised a preliminary objection to RIM’s application, on the basis that it might cause confusion with BBM Canada’s trademarks. Nonetheless, RIM continued to use the acronym to promote its BlackBerry products, and as a result, BBM Canada sued RIM.

As mentioned above, BBM Canada claimed that RIM’s use of the acronym “BBM” caused confusion with BBM Canada’s trademark. According to section 6(5) of the federal Trade-Marks Act, factors to consider when looking at confusion include: the extent to which the trademarks have become known, the length of time the trademarks have been in use, the nature of the businesses, the nature of the trade, and the degree of resemblance between the trademarks. Before considering these factors, Justice Near of the Federal Court of Canada deliberated about the appropriate universe of consumers to consider. Justice Near determined that the consumers that would potentially be confused are broadcasting and advertising companies, and not the general public, since the companies are the actual users of BBM Canada’s services.

According to Justice Near, although BBM Canada has used the acronym for longer, RIM’s use of “BBM” was better known. As well, the services offered by each company were sufficiently different, and the consumers of BBM Canada’s services were sufficiently sophisticated, that there was little risk of confusion. Finally, when a trademark is merely an acronym, it is only offered a narrow band of protection within the specific area that the owner of the trademark operates (see Letters and Initials). Due to Justice Near’s finding that RIM’s business was sufficiently different from BBM Canada’s, the allegations regarding confusion failed.

Similarly, there was no evidence that RIM’s use of the acronym “BBM” led to passing off or depreciation of goodwill. In both cases, BBM Canada would have to show that prior goodwill existed in the mind of the public, which it failed to do in this case. Justice Near held that no member of the general public, or the broadcasting community, would see RIM’s advertisements containing the term “BBM”, and be confused whether those services were in some way associated with BBM Canada. Despite Justice Near ruling in RIM’s favour on all claims, the status of RIM’s “BBM” trademark application remains undetermined.

Although RIM may have won this legal battle, BBM Canada could end up having the last laugh. With the option to appeal still available to it, BBM Canada may receive another opportunity to argue its position in court. Even if that fails, RIM’s recent financial woes (see here and here) and employee layoff plan beg the question: will RIM be around long enough to enjoy the benefit of this legal victory?

Evan Reinblatt is a JD candidate at Western University, Faculty of Law.