RIM now facing legal woes over BBM trademark

By Bla1ze on 22 Dec 2011 11:17 pm EST

With the whole 'BBX' dispute now a thing of the past, RIM once again is facing some legal woes -- this time over their use of BBM. The Toronto based broadcast industry group BBM Canada has a long standing history of using the BBM trademark, and is now taking action against RIM in an effort to get the rights to their name back, claiming that RIM's use of the trademark is infringement.

“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.”

According to documents, RIM applied for a “BBM” trademark and was advised by the Canadian Intellectual Property Office that the trademark “was not registrable,” but they still went ahead and used it, even going so far as to show it as a trademark on their corporate website. This use caused confusion for the smaller company, noting that their email addresses were often confused for that of RIM employees and they even began receiving customer support requests for RIM's BlackBerry Messenger service.

BBM Canada is a group that was established back in 1944 and operated as the Bureau of Broadcast Management, to later shorten the name to BBM Canada. In August Jim MacLeod, president and chief executive officer of BBM Canada, went ahead and filed suit against RIM after attempts to reach out to RIM failed. Now the company is seeking an injunction stopping RIM from using the name in addition to seeking damages.

Thus far RIM has refused to comment on the matter, but looking at the situation it appears to be a losing battle. Much like RIM's use of the BBX name, the BBM mark has indeed been in use for a while. After having been advised not to use it, I can't see how RIM could ever possibly win this one nor do I personally believe they should. I seriously hope some of RIM's 'restructuring' involved firing some of their lawyers, because even I, with no legal degree or experience, can see that it's just common sense to check on a trademark before you know, using it and claiming it as your own.

Source: Globe and Mail; via: MobileSyrup

Reader comments

RIM now facing legal woes over BBM trademark


So... maybe some of the $100million advertising and marketing budget should be put towards paying lawyers that do their jobs?

Hey Bla1ze, your logic makes a lot of sense here.

I mean all these other franchises should be attacking RIM with a vengeance...

Boston Bacterial Meeting
BBM Human Resource Consultants
Broadband Mechanics
BBM Marketing
BBM Tile Care
BBM (Battambang Airport)
BBM Revolution (cycling club)
BBM Technical
BBM Analytics
BBM Bommidala
BBM Guitar Cord!!

How dare RIM associate the letter M with BB!! Also blackberry farmers should be enraged at RIMs use of the letters BB. Clearly an open and shut case I agree... what were those baffoons thinking.

Uh..."BBM", not just "BBM Canada", is registered, and the article says RIM knows that and went ahead to use it anyway. There's no way you can justify this. That's like naming one of your product BMW and expects to get away with it.

Being a fanboy is one thing, going so far as to encourage illegal actions is another.

If you were making cars, or car products I can see why you couldn't & shouldn't use BMW. However if you are selling icecream I doubt anyone would confuse the two.

There is NO WAY anyone is realy going to confuse the Bureau of Broadcast Management with BlackBerry Messenger!

They are just suing becuase they think they can make some cash! :(

It looks like you missed the part in the article where it said people were emailing BBM asking for support with RIM's BlackBerry Messenger. Obviously, someone got them confused.

Which is just everyday wrong numbers to me. We all get those. You get more if the company in question is larger. BBM by RIM is international. BBM Canada is well you guessed it. They just happen to be both based in Canada. This sue everybody mentality is out of control now.

@ JackKennedy

So by your logic I can make a company called "Kentucky Fried Chicken Tire & Lube Co." (TM)

and be just fine

BBM as an acronym is way too common - it is already used by a range of differing companies. No company should have the exclusive right to it.

Just checked the original article on Globe and Mail, the real deal is this:

RIM launched BlackBerry Messenger in 2008

RIM started advertising the Messenger as BBM in 2010 and applied to register for the trademark of BBM at the same time.

Canadian Intellectual Property Office warned RIM that the name is already trademarked (by BBM) and was not registerable.

RIM did not register and went ahead and advertise BlackBerry Messenger as BBM in 2010.

BBM and its subsidiaries such as the aforementioned BBM Analytics were bombarded with emails to RIM due to the bbm.ca domain. "BBM" is the registered trademark of BBM in both Canada and United States.

BBM contacted RIM sometime before August 2010, and RIM declined to resolve the issue with BBM. At some point, BBM offered to rebrand themselves if RIM could subsidize the costs, RIM did not response.

From then to August 2010, BBM has been actively meeting and negotiating with RIM but RIM refuses to offer any change.

BBM filed a lawsuit concerning trademark infringement on August 2010.

and may I also correct that BBM is a non-profit organization with multiple subsidiaries all operating as "BBM ******" or "****** BBM", their operations are just to provide accurate television audience measurements, and not for profit.

And to make it even more miserable for RIM, "http://bbm.ca/_images/logos_vert.jpg", RIM's BlackBerry's logo also seems to have ripped off their old logos too...


Jack Kennedy is just a local celebrity...it would be quite a shame if he has to die for no reason or RIM's infrinement of others' trademark...

exactly no company should the right but the law may not favour RIM here maybe BBM will be re-branded as something else i was thinking BBC but then i was like crap that's a British news channel. when there are heavily used acronyms by companies they shouldn't be held exclusives right by one . its a nasty tactic also by this company they could have filed this lawsuit years ago but now RIM has made alot of dollars from the BBM brand they wanna cash in there should be a law stating after a set number of years and claims to the name havent been filed or lawsuits the company seeking action cant issue any

just to clarify, they contacted RIM as soon as RIM started using BBM as an official marketing name in 2010 and after half a year of negotiation where RIM basically ignored them, they filed a lawsuit.

They never waited. And we have just found out that BBM is not a company but a non-profit organization.

No from his logic you could make a company called "KFC Tire & Lube"

Pay attention, BBM Canada shouldn't and probably won't win this

I doubt it...RIM has been aware that BBM is registered the whole time and continually ignored the damages it did to BBM

and I think you have misunderstood the situation, while they do hold the registered trademark of "BBM Canada", the company is called and also registered as "BBM" in the US and Canada.

But you're taking the name word by word and Fried Chicken has nothing to do with tires and lubrication (I know you're just using that as an example, but I'm sure that does come into play when you're going into court, trademarking, etc.). I think that it is okay to have the same abbreviations (KFC, BBM, etc. as long as you are in different sectors, but that's just my opinion and considering RIM lost the BBX battle, they might lose this one too).

Actually, there would be nothing wrong with "Kentucky Fried Chicken Tire & Lube". Let me give you an example:

There is Maybach: the super luxury vehicles.
Then there's Maybach Music Group: a group headed up by popular rapper Rick Ross.

I'm pretty sure Rick Ross ain't getting sued because no one will confuse the two. Now acronyms are tricky. This is why you never see "Maybach Music Group" written as "MMG" on paper because it's already taken. Every time it has to be mentioned/written with the full name.

except both are just "BBM", so the example doesn't really relate to the case....

The organization registered and used the name "BBM" in addition to "BBM Canada" and you would imagine that people in Canada would just call it "BBM". RIM also marketed the BlackBerry Messenger as BBM since 2010.

Maybe Kentucky Fried Chicken Tire & Lube Co. is not such a good example, mostly because it doesn't make any sense???

All of these companies should go ahead and sue eachother for good measure.

Best Buy suing RIM for the use of BB! Claiming blatant trademark infringement! How could they think they could get away with this???

You should really shut up cause I don't see nor understand why a world wide recongisable brand 'BBM' from RIM should have to be taken down. RIM made more of an corporate success with the name so why should they have to take it down. There are many companys with simular abbreviations and you don't see them complaining.

because they knowingly started using "BBM" AFTER finding out that "BBM" is registered by BBM in US and Canada. BBM is the victim here.

Oh Lord........(say it so many times when reading RIM-related blunders like these that I ought to be in church)

Knowing that BBM is trademarked yet they still use it? First OS2, then BBX(10) and now this? Is RIM run by monkeys? I'm speechless really with RIM.

what you should really wonder is why TLAs can be trademarked. It's friggin retarded... odds are they'll call it B.B.M. and get away with it just fine.

Likely because now that RIM is stumbling (or so the public media makes it sound, and is also my personal opinion) it may be easier to win a lawsuit like this. Although, it should be a no brainer win anyway... it appears RIM knew BBM wasn't a registerable trademark but used it anyway (maybe hoping that because they were so powerful and successful that no one would challenge them??)

It's not like they even have a functioning qnx device with bbm anyway...great excuse for RIM to launch one without and nail their own coffin

This is either an example of absolute stupidity or absolute arrogance on the part of RIM management.

I am neither a troll or and Apple fanboy - I'm a loyal BlackBerry user through and through. Losing their most valuable product name because they ignored an existing trademark is lunacy. People equate RIM with 'BBM' so losing the ability to use that acronym hurts them more than anything right now.

Uhhh, no offense, but if you actually defend RIM in this one, you've got problems. As a shareholder, I would ask that both CEOs immediately resign. This is inexcusable. They don't even know the basics when it comes to running a business. Don't knowingly infringe on other people's trademarks. Hope they lose a ton of money, it's the only way these idiots will get a clue.

And I've been a RIM supporter for years. No troll/fanboii here.

infringing registered trademark is justifiable because the violator is RIM?

RIM should start selling you cement bricks and charge 199USD each. This will subsidize their developments...

brilliant...but BB a thousand me sounds a bit clunky...

now BB10 and BBX was probably what RIM was planning, informally writing the ten in Roman numeral to infringe BBX's right...

RIM should trademark BBA, BBB, BBC(nvm, taken) all the way to BBZ so that they can use all of the ones that haven't been taken already ;) ..and I like BB one thousand, but not for BBM, sounds more like the name they should use for BBX or for their first BB10 phone...

I'm sorry but there is such a thing as enfore your trademark or lose your claim. RIM has been using BBM for several years. And only now do these people come out of the woodwork when it seems fashionable to jump on the anti-RIM bandwagen.

If they were soooooo concerned about people confusing their association nobody has ever heard of with BlackBerry Messenger perhaps they should have thought of this years ago.

I guess the blackberry growers of America will be up next because perhaps fruit purchasers will be confused as to where they should buy their fruit, the grocery store or the local cellular store.

uh...would help if you read the article, BBM is being bombarded by emails concerning RIM and BlackBerry Messenger has only been around for the last three years or so, so clearly people won't start emailing BBM on RIM's stuff on the first day of BBM's release and the emails probably gradually increased due to emails from other parts of the world. Not to mention that almost nobody takes instant legal actions.

If people are thinking someone's email address is BlackBerry messenger than they are too dumb to occupy the earth.

And yes, legal action must be taken to defend a trademark. If you don't defend it you can lose the rights to claim it.

Well the BlackBerry users who sent in the emails who sent in the emails would be the ones "too dumb to occupy the earth" according to what you said, and not BBM. You can't say BBM is stupid for not being able to predict that they names will be illegally used by RIM in a messenger client across the world.

They are taking legal actions, if the email started at sometime in 2009, it's only been 2 years, and the article explicitly said they also tried to contact RIM to resolve the issue.

There's absolutely no justification for violating someone's registered trademark, causing inconvenience to them, and expect to get away with it.

I'm looking at my Bold 9900 and it's called BlackBerry Messenger. I don't see BBM anywhere. Wasn't it the consumers that started calling it BBM? Nevertheless, all RIM has to do is go what is currently named on their devices, BLACKBERRY MESSENGER.

That can be easily patched.

Seriously, folks, BBM is what people will continue calling it. RIM can drop the three letters without losing a dollar.

%s/BBM/BlackBerry Messenger/g

PROBLEM SOLVED. Let's move on.


RIM Being sued by Bold laundry detergent for blatant trademark infringement!! Confused customers bombarding Bold laundry detergents email with questions on how to set up email on their bold plus 9900!! Much confusion and panic ensued! Many phones reportedly destroyed when customer support suggested to try adding water to their bold!! Angry customers everywhere!

Oh the humanity!

More as this story unravels!

@Issac Kendall

"If they were soooooo concerned about people confusing their association nobody has ever heard of with BlackBerry Messenger perhaps they should have thought of this years ago.

I guess the blackberry growers of America will be up next because perhaps fruit purchasers will be confused as to where they should buy their fruit, the grocery store or the local cellular store."

I think this right here hits the nail on the head. RIM seems to be an easy target right now, so anyone who thinks they have a shot at winning a lawsuit is gonna go after them. Not to long ago the mighty RIM empire was strong and rich and growing... not an easy target. But now, with stocks and public opinion taking a nosedive (in North America at least) RIM seems to be dying a slow death... and a big target like that is going to attract a LOT of vultures

You guys made it sound like RIM has had the Messenger forever and BBM should have learned of this ages ago. If no one in BBM uses BlackBerry, I doubt they would know of the messenger anytime before the emails from around the world started piling in their inbox.

This has nothing to do with RIM being an easy target. This is RIM illegally using a trademarked name of another company. It doesn't make sense that they should/could get away with it when BBs were doing well.

It's BlackBerry Messenger, not BBM.

BBM was adopted by the media/consumers.

Case closed.

haha...fire the marketing, fire the CEOs, fire the programmers, and now fire the lawyers...

We're asking RIM to fire everyone in the company...

We should all just pretend Microsoft rebranded themselves as RIM and carry on.

This is just ridiculous. Next they wont be able to label it BB Messenger or something because someone out there uses the term BB.
Bugger off BBM Canada, nobody cares about your name except you.

That's quite horrifying...if no one cares about your good and interests except you, they can just take them away from you?

"In 2001, BBM adopted a new name and became officially known as BBM Canada..."

No law against using a 3 letters out of a trademark, is there? Would CrackBerry.com file a lawsuit over me creating a brand called "Berry"?

Nope, "Bureau of Broadcast Management", "BBM Bureau of Measurement", "BBM Canada", and "BBM" are all registered in the US and Canada at some point way before the concept of BlackBerry Messenger. Their logo has been BBM since the 40s and the domain name bbm.ca is also their before BlackBerry Messenger existed, so RIM will have a very difficult continue using the name BBM in marketing.

There's pretty much irrefutable proof that it will cause inconvenience to BBM due to the domain name and the term "BBM" alone has been registered and used for a very long time way before BlackBerry Messenger.

The new name if needed should be "BIM" BlackBerry Instant Messenger. I claim that so RIM will now have to pay me to use it! Haha.

According to Wiki, http://en.m.wikipedia.org/wiki/BBM_Canada BBM Canada didn't change their name (shorten) it to BBM until '01 which BBM (BlackBerry) already exsited and claimed the acronym for BlackBerry Messenger. Theoretically there's no case. And what the hell, what if my name was Billy Bob McShannon or something? Can I sue too? Rim took my initals! People are thirsty for money in down times!

@Isaac Kendall

Exactlly what I was just twittering someone. If I can remember my HS Law, it's called Adverse Possession. Squatter's rights, basically. If something belongs to you, and you ignore that someone else has it, that something becomes the other person's property after a period of time. The question is (which someonee raised already), why did BBM Canada wait so long to defend its' trademark? Trademarks have to be distinct as well. "BBM Canada" is different from "BBM". I think a court of law would take into account that "BBM" is associated with RIM in the public eye.

uh...the article already said that they tried to contact RIM earlier but it didn't resolve anything...and if RIM only started calling messenger BBM "officially" in Playbook then it has only been several months. Both "BBM" and "BBM Canada" are trademarked.

Just one day, I'd like to wake up and see good news reported about RIM. Seriously, is that hard. Oh well, if they are looking for a new name, I vote for WASF! Short for "We Are So F.....!"

This is hard to read, I do agree that they have no case though. There are plenty of other companies that use the same acronyms, and it's BBM Canada anyway.

Check out BBM.ca under the about link...at the bottom see their logo circa 1999... Theyve probably gotten more hits today than in their entire history. I agree with @issackendall and would be curious about the lack of defense of their trademark and how that would apply in this case. Technically it is Blackberry Messenger so they drop BBM from any future marketing and move on. Or BBM Canada should strike up a licensing deal with RIM..

BBM Canada said they are willing to change the name of their organization if RIM would subsidize the cost (they are a non-profit organization). RIM refuses. The worst that could happen is RIM has to pay, but their reputation is tarnished for being repeatedly being stupid.

A quick lookup of RIM trademarks on their corporate site and immediately I notice that the tradmarks are in the United States and not in Canada. Also in their initial summary posted below, RIM indicates that its a trademark and not a REGISTERED trademark. Bla1ze, please correct that in your post as you are reporting inaccurate information. RIM did not claim it as a REGISTERED trademark on its website.

I would venture to assume that at the very least they may be made to cease marketing BBM in Canada as BBM.

The official name of the app is Blackberry Messenger. There is no need to change the name. The regular joe will just continue to call it BBM and RIM will just market it as Blackberry Messenger instead of just BBM. Simple. No confusion and everyone will still be happy. RIM cannot control if people choose to shorten the name of their products, they just have to not market it by the shorten name if it will infringe others.

Case close...


RIM Trademark and Logo List

The following sets out some of the word marks and logos of Research In Motion Limited (RIM). The Trademark Status column indicates the status of the trademark in the United States (® indicates a registered trademark; ™ indicates a trademark).


BBM is registered in US as well, and the point is that RIM deliberately chose to market BlackBerry Messenger as BBM (including the States and Canada) since 2010 *after* finding out that BBM is registered. It's not like they don't know; they are quite literally asking to be sued and refuse to do anything to resolve it until it's taken to court (likely lose).

Yes, what you are saying would be wise, switching back to BlackBerry Messenger, but it's RIM who deliberately tried to test laws by marketing the name BBM after they found out BBM is registered.

It feels like everyone is picking on the little kid at school whenever you read anything to do with RIM these days...
Who would have thought that RIM is the underdog ?

RIM did what Apple did - they use the name, wait to get sued, throw money at the lawyers to make problem go away, if it isnt going away they settle quietly. Wonder if RIM has the stamina ?

So if this is the case should the BBC ( British Broadcasting Corp) sue all the porn sites for using their abbreviation!?

All these lawsuits are getting out of hand! Perhaps RIM should sue Tim Horton’s for using “Roll up the “Rim” to win”.

Great! This is a perfect time for RIM to kill off BlackBerry all together and startover. RIM is just starting 2 really piss me off.

if BBM can prove that a sufficiently reasonable number of customers actually confuse BBM with BB Messenger, I believe BBM has a case.

Im a BB fan but this is absolutely rediculous...u cant fault apple/android fans for ridiculing RIM..its embarassing to say the least....i have refrained from critisizing those 2 bozos but this is too much...the company will even lose more money as value if they lose one of their non trademarked names...their biggest probably...how big of losers those 2 bozos are...they should get fired...they have no business sense at all i feel at times...amazing really...and they were printing up BBM me shirts in thailand and at other places...they sound like cheap chinese companies stealing trademarks...
boy...the stpry with those 2 bozos will never end...only when u think they are getting back on track , they get exposed for doing something stupid...
amazing...they are hell bent on taking this company down...

Here is a great question with Blackberry Messenger being around for so many years why did it take them this long to decide to file suit?

Granted RIM did use it anyway knowing full well they couldn't use it forever and they deserve the suit being filed but why so long.

Man - I love reading the replies on these things. BlackBerry Fanboys: A word of advice here - it isn't worth fervently defending something like this - RIM isn't going to send you a thankyou for saving their court case ;-)

My personal opinion is that it we'll probably have to go back to use BB Messenger again (which was a perfectly good name).

First of all Trademarks are not like patents, they are not absolute. Just because you have a name trademarked does not mean no one anywhere can use the name. The registered trademark is only good for the goods and services for which it was registered. This is why BASIS won it's trademark suit with BBX because they use the BBX name with software used on mobile devices. BBM Canada is neither a competitor of RIM nor do they serve the same customers with related goods and services. Therefore RIM can use the BBM name even though it has been trademarked by BBM Canada. BBM Canada is simply looking for a payout and RIM wouldn't do it so now they are suing. Now, if RIM ever decides to get into the television and radio business then they will have a claim.

You do realize that the two companies would have to be in the same line of business or close enough for consumers to get confused by the name use for all this to matter? Otherwise, it's hard for companies to say nobody can use a three letter word, especially when the official title of the app is Blackberry Messenger and BBM was created through the consumers and media use of the word.

Jeez some of you guys are such annoying fanboys. I like RIM, and I use their products but to defend this is absolutely insane. THEY DESERVE TO BE SUED!!!

And I guarantee you that if it was RIM suing someone over the BBM trademark you guys on here would be saying "Go RIM! They can't use your BBM name and get away with it!!!". Wake up, RIM will lose this and they deserve to lose it.

While B1aze is normally a solid poster, I'll need to disagree with him here regarding trademark law.

In Canada, trademarks can exist in two ways: Registered or common law. BBM Canada has a registered trademark, but a common law trademark may exist in favour of RIM. A common law trademark exists where there is a local reputation that the public associates with a name. So if RIM can establish that more people in the community (likely narrowed to Toronto here) associate the term "BBM" with RIM's product, then BBM Canada will lose. Regardless of the marketing push, if BBM Canada failed to defend their trademark, or the public does not associate BBM with BBM Canada, then their trademark is unenforceable.

It follows, then, that if more people will associate BBM with RIM than BBM Canada, BBM Canada will not be successful, which I think will be the case. Trademark litigation is actually the most expensive of the different types of IP litigation in Canada (patents, copyright and trademarks), so it may be a drain on resources. Nevertheless, BBM Canada has a difficult case since BBM has existed since the mid-2000s and their failure to enforce their trademark in a timely manner may have been to their detriment.

BlackBerry Messenger was marketed officially as "BBM" around Feb 2010, the lawsuit was filed in August 2010, and negotiations between the 2 have started much earlier. There was no delay whatsoever, so I don't know where all these posts saying BBM delayed the case until now come from.

The point is that RIM used the name as an official marketing unregistered trademark name AFTER finding out it is registered by BBM.

I'm not sure how the law works in Canada - but if this were in the US they wouldn't have a case. In order to keep your trademark you have to go after every case of trademark infringement. Also, not really sure it's smart of BBM Canada to kick RIM when they're down - Canada needs good company's like RIM to stick around for a while in Canada.

I honestly don't see the fuss here, the only logo most people would associate with BBM is the one up there, the speech bubbles with the BB logo inside it, i've never known or seen any other BBM trademark and i reckon like someone said up there, it's an acronym, so whether RIM registers BBM as a trademark or not, people will still call it BBM because after all it is BlackBerry Messenger thats how the users have always known it, because that's what it is...

All RIM needs to do is get rid of the acronym "BBM", replace it with "BlackBerry Messenger" in all marketing and communications, and advise carriers and dealers to follow suit. Problem solved.

Doesn't this sound familiar with "The Astonishing Tribe" they didn't want to use the acronym TAT mostly because it didn't sound all that great I bet but they wanted to make sure all the media and acknowledgment used their full name and not the acronym.

RIM if they KNEW which it seems pretty clear they did should be punished for this but yes they will likely just come up with a quick fix adding a period in between or changing letter sizes as was mentioned.

Has it started to feel like you are shouting at a tree yet? I admire your tenacity (and whole heartidly agree with your point) but at what point do you say "they broke the law(patent/trademark law), they shouldn't have done it, and now they will pay. And you should be careful using jack kennedy he might just sue YOUR ass off for using his name (even if it is your real name google rolling stones [band] vs playboy writer) anyway cheers to your point.

P.s. Maybe it should be looked at like a murderer is still a murderer no matter how swell of a guy he is

doesn't matter if they win the case and rim has to change it... bbm is already to branded into people's mouth... i for one will always call it bbm

RIM has no chance of winning this. This is Exactly like the Whole WWF (World Wildlife Foundation) VS WWF (World Wrestling Federation) that thing went to court for yrs and and the Wildlife Foundation won.. So now The WWF became WWE.

People are defending are defending RIM and they should have the right to use the name, but it's clear as day RIM is at fault they knew what they were doing they use a trademark name for their own and they dont want own up and work with BBM Canada. What kind of business sense is that?

BBM Canada Had the name since 1944 and had the BBM trademark for since forever, RIM hasn't tried to work anything out. They could have spent a few millions to help rebrand BBM canada but they choose not to. So now RIM is going to have to pay and not use the BBM name anymore. I love my Blackberry but this has been a bad year for RIM. They definitely need a new restructure cause what they have now isn't working for them. RIM is wrong Period.

So whatever. They will now stop calling it bbm. But call it blackberry messenger. We the people will still call it bbm though. "Bbm canada" can't sue us all lol

How about they just drop a "B" and call it BM? Everyone would call it BBM afterwards anyways. It's like how everyone calls the Willis tower the Sears tower. It will ALWAYS be the Sears tower