Piling On: Beleaguered RIM Sued Over BBM Trademark (Updated)
Earlier this month, the company was forced to change the name of its forthcoming BBX operating system when Basis International filed for a temporary restraining order, claiming RIM was infringing on its trademark. Now it’s being challenged over BBM, the nickname for its popular instant-messaging service, BlackBerry Messenger.
Broadcast industry group BBM Canada is dragging RIM into court, claiming trademark infringement. And it has good reason to do so: It owns the trademarks on “BBM” in both the U.S. and Canada. The group seeks an injunction prohibiting RIM’s use of the BBM mark, as well as damages.
“We want our name back,” BBM Canada President and CEO Jim MacLeod told the Globe and Mail. “I find it kind of amazing that this wouldn’t have been thought about before they decided to use the name.”
Seriously. Particularly since BBM Canada has been around for more than 60 years.
And then there’s the fact that RIM’s 2009 attempt to register the BBM trademark with the Canadian Intellectual Property Office was denied on the grounds that it was already in use.
But evidently this meant little to RIM, which continues to use the BBM mark to this day over BBM Canada’s protestations, and will soon have to defend its behavior in court. A hearing on the matter has been scheduled for January 11, 2012.
Update: Reached for comment, RIM offered AllThingsD the following 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.”