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Canadian Company Sues RIM Over 'BBM' Trademark

Article Comments  15  

Dec 23, 2011, 8:16 AM   by Eric M. Zeman
updated Dec 23, 2011, 3:01 PM

A broadcasting company called BBM Canada has filed a trademark lawsuit against Research In Motion over its use of the name "BBM" to refer to its BlackBerry Messenger service. The broadcasting company has been incorporated since 1944 and has used BBM in its logo for sixty years. It claims that when RIM attempted to trademark "BBM," RIM was told that the name "was not registerable." BBM Canada says RIM put a trademark symbol on "BBM" and began to use it anyway. "We want our name back," said Jim MacLeod, president and chief executive officer of BBM Canada. "I find it kind of amazing that this wouldn’t have been thought about before they decided to use the name. The same thing goes for BBX." BBM Canada maintains that its own employees have been mistaken for RIM employees, and that its business, web site (BBM.ca), and email addresses are being confused with RIM's. BBM Canada says that it tried to reach an amicable settlement with RIM (it even offered to rebrand itself — though at RIM's expense), but RIM has refused. "We don’t want to pile on the troubles of RIM," said Macleod, "but from our point of view, this is a very serious situation." Late Friday, RIM responded to the allegations and said it believes there is room in Canadian law for both companies to use BBMs. Read RIM's full statement.

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The following statement was provided to Phone Scoop from Research In Motion's media relations team:

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.

About the author, Eric M. Zeman:

Eric has been covering the mobile telecommunications industry for 17 years at various print and online publications. He studied at Rutgers Newark and University of Kentucky, and has a degree in writing. He likes playing guitar, attending concerts, listening to music, and driving sports cars.


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Dec 24, 2011, 10:10 AM

I'd like to see the data...

On just how they have been compromised. I doubt ANYONE, for decades, has ever confused one BBM for the other. This is in Webster's if you look up FRIVOLOUS LAWSUIT.
A broadcasting company probably wants it's name to show up in search results for one. I can see how two companies with the same name in vaguely related fields can be confused.

I don't think it's frivolous at all, especially since BlackBerry was to...

Dec 23, 2011, 9:15 AM

How nice of them...

"BBM Canada says that it tried to reach an amicable settlement with RIM (it even offered to rebrand itself -- though at RIM's expense), but RIM has refused. "We don’t want to pile on the troubles of RIM," said Macleod"

Wow, that's a stereotypically Canadian response! 😳
Canadian eh? Then why didn't they settle over a logging competition after having a half-stack of pancakes in an igloo? eh?

Dec 26, 2011, 11:57 AM

This reminds me of Gatorade versus T-Mobile...

So, whatever happened with Gatorade and their G2 drink, and T-Mobile's G2 phone? Seems like the same type of scenario. And back in like '98/'99 RealAudio/RealPlayer had their "G2" player... hmmm... 🤨
Or Apple Computer and Apple Records, in the end, the former found out there was more money to be made collaborating then litigating. Similar with Opus wine from Mondavi and Opus X Cigars from A. Fuente, they were in litigation for years, and found th...

Dec 24, 2011, 2:41 AM

Research? in Motion

RIM does not seem to be living up to their name. Recently, they tried to use BBX for their OS name, and now this. Just call it BM and get it over with...
Bowel movement? The human body sues! 🤣

Dec 23, 2011, 10:47 PM

Next lawsuit

smuckers jelly sues over the use of the word blackberry 🙄
I'm your fathers, brothers, sisters, cousins, best friends former room-mate. You know what that makes us?
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