Finally some good news for Research in Motion this morning, as the Federal Court dismissed a lawsuit by BBM Canada challenging the use of the trade-mark “BBM” by Research in Motion Limited (RIM) in the promotion of its BlackBerry Messenger service.
The court held that BBM Canada, offering “BBM” as a specific brand of
broadcast measurement services, is not entitled to a broader monopoly
outside the broadcasting and advertising industries even though it had
been using its trade-mark much longer than RIM, as the nature of the
products and services provided by BBM Canada and RIM vary
significantly. BBM Canada’s focus is on impartial measurement of
ratings data and sophisticated market research for a narrow and distinct
group of consumers in the advertising and broadcast media industry,
while RIM makes smartphones intended for the general public. The court
also found no evidence of actual confusion by consumers, no finding of
passing off and no depreciation of goodwill.
This decision was rightly decided, in my view, as generally the
nature of the products and services used in association with a trademark
defines the scope of the trademark monopoly. BBM Canada doubtlessly
knew this from the beginning. Perhaps BBM Canada thought its use of the
mark since 1944 gives it a fighting chance at a the court recognizing a
broader scope for its trademark. In this case, they were wrong.