RIM issues media statement responding to BBM trademark suit

By Bla1ze on 23 Dec 2011 03:15 pm EST
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BBM

Following up on the previous information surrounding RIM and their use of the BBM mark brought forth by BBM Canada, RIM has now issued the following media 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.”

Will BlackBerry users get to keep BBM? With the case pending it's hard to say but it'll be interesting to see which way things go.

Reader comments

RIM issues media statement responding to BBM trademark suit

53 Comments

Yes! Glad to see RIM in attack mode with that bold statement. They are absolutely correct with their interpretation of the Canadian trademark law.

Except Globe and Mail just published a follow up and clarified some points that basically say RIM is flat out lying (are we surprised):

A letter from CIPO indicates that RIM tried to register "BBM" on October 15, 2009 and was rejected. RIM applied for an extension to the request in 2009 and then did nothing from 2009-2011 (again, are we surprised).

BBM being mistaken as RIM not only causes inconvenient to BBM but also made them unable to gather information. BBM is a non-profit organization formed to measure a variety television-radio broadcast data, and some of which involves gathering audience information through calling the public. It is these phones call that are being mistaken from RIM that made BBM difficult to gather information for Statistics Canada and the Canadian Radio-television and Telecommunications Commission.

Apple didn't own "iPhone", Cisco did (there had been a Linksys product by that name, very briefly). It was quietly settled, though there was likely some money involved.

Yea! that's what I said yesterday. THEY ARE NOT EVEN CLOSE TO BEING IN THE SAME INDUSTRY!!!

BBM Canada will have to prove that a reasonable person could confuse the 2 companies.

I hope the judge throws this case out & awards RIM costs associated with defending it's self (though the Canadian courts don't often award those)

This is just a money grab. Good on RIM for pointing out that their application has NOT been refused by CIPO.

That's why if you look at RIM's list of Trademarks you have BBM™ and not BBM®. IF CIPO approves their application, THEN RIM would be able to use BBM® to show that it is a REGISTERED Tradmark. BBM™ Just indicates that BBM is their Trade Mark, and not a REGISTERED Tradmark.

They are not allowed to use registered trademark of another company. Your logic makes as much sense as you start selling BlackBerry™ Smartphone.

BBM just said that they have 250,000 calls each year to prove it. BBM made it quite clear that this is a case also involving public interests as the information gathered in those calls were meant for government departments regulating Television and Radio in Canada. BBM probably has the moral high ground in this.

The result is probably either RIM pays or just call it BlackBerry Messenger officially from now on.

This a nonsense suit, if rim loses the suit and goes back to calling it blackberry messenger officially are we all gonna up and stop calling it bbm?

The fact is that we the consumers started calling it bbm and almost all of us were oblivious to whether rim started using the acronym or when, nor do we give a shit.

Win lose or draw it will still be business as usual its not like when the world wrestling federation had to change WWF to WWE (which still feels weird to this day) as long as rim and blackberry exist in the fashion it does today it will still be BBM.

I am a Trademark Agent registered with CIPO and I think RIM's statement is legally correct. The test is "risk of confusion". I don't see the two marks as confusing. Take the case against the Barbie's restaurant in Quebec. Mattel tried to obtain an injunction against the restaurant's use of the "Barbie" name arguing it was confusing with their mark for their doll. The Supreme Court of Canada disagreed. It will be interesting to see how this shakes out. It is possible to have two companies with the same wordmark co-exist provided there is no risk of confusing their products or services. I don't see much of a risk here.

When someone applies to register for a trademark with the CIPO, what are the possible responses the CIPO provides? Yes/No/...?

Their response is pretty much a copy & paste of their response to BBX - and we know how that ended up. I am expecting RIM to have to make a big settlement here, just like Apple paid to Apple Records

Original BBX statement:
“RIM has not yet received a copy of the legal complaint described in Basis International’s press release, but we do not believe the marks are confusing, particularly since our respective companies are in different lines of business.”

BBM Canada is doing this SOLELY because of their awareness with regards to the BBX trademark. This has LAME written all over it. What better way to start off the new year, 2012, with RIM winning this one. A small or big win, a win nonetheless. I'm all for RIM here. Screw these whining bastards. It's like that annoying co-worker who always wants to copy you or do the same thing you do because you just got promoted or you just got approved for training, or just got a new car, etc.

it makes sense...
in Canada we have Popeye's Chicken and Popeye's Supplements.
Both have the name Popeye's however, one sells fried chicken and the other nutritional supplements.

Remember WWF? They had to switch to WWE because of the World Wildlife Fund, and i don't think they are competitors. Just sayin!!!

The worst thing is that Globe and Mail reports sources as saying that RIM's legal department gave warnings to the managers about the naming conflicts, but that high level parties chose to ignore that warning. Why do you have a legal department if you're not going to listen to them?

Oh yes RIM!! People come at you with arguments and you just brush them off because you dont sink to their level! OH YES :D YOU GO RIM

@ beemir, it sure does have LAME written all over it. Here is a statement from the local paper:

The company’s chief executive, Jim MacLeod, said he wants RIM to stop advertising the BBM moniker but would also consider changing his much smaller company’s name, for a price.

Sounds like someone is just seeing some $$$$$$$$

RIM operates world wide, bbm Canada does not. Never heard of them.....very unlikely somone is going to get confused between the two when talking about smartphones or instant messaging.
So take your dollar sign eyeballs elsewhere Macleod!

Of course this is not about the name, it's about the money. But good response RIM: sue the bastards for any costs incurred in the suit! That'll teach them and every name troll a lesson.

I'm glad RIM is also suing for costs. BBM Canada saw how easily RIM gave up on BBM & thought they could push them around too. RIM has so much on their plate they will just give them $$ to go away. If RIM doesn't make a statment soon they will be bombarded with people suing them for every tradmark they have.

"Mr. McLeod recalls that he reached out to RIM, offering to rebrand his company if RIM was willing to cover the costs"

They were asking for the cost of the name chang. Since BBM is a non-profit org, I doubt they would have requested anything more than reasonable. RIM stole BBM's name, and BBM still gave them a chance to cover only the cost of a name change, RIM still rejects the proposal; RIM quite literally asked to be sued and I hope RIM loses.

Not calling BlackBerry Messenger BBM in official material is such a small gesture and so too is paying the non-profit organization for a name change. There's just no possible way to sympathize RIM unless they are mentally challenged.

lol "RIM Jobs" took me a few seconds to get it.

I say sue them for destroying rim job's everywhere. "Rim jobs" have been around for thousands of years, "RIM Jobs" only 20 :D

Hey Folks. RIM Rider here. Been riding RIM for quite some time, it's been quite the ride, but there's still some riding left to go.

Read your comments folks. Thought about it a bit. And, indeed, there is a confusion criterion in Canadian versus American copyright law. Now, RIM may have an argument in Canada, however if BBM's lawyers are worth any street cred, they can easily argue that Research in Motion can be confused for signal analysis in relation to broadcasting/radio market analysis. Both companies involve radio signals, unfortunately, and they are in the same industry. This will be up to the judge. The second criterion is the general public, and from what the BBM CEO said, there is ample confusion between the two companies, BBM frequently gets calls for BBM (BB) support and to purchase BlackBerry phones. Employees are mistaken for RIM employees, and the CEO himself is mistaken for a RIM employee. This has a negative impression on his business. Furthermore, BB Canada wants to develop apps in relation to its business, something that the two companies definitely are involved in. I can go on. This will be a very tough case for RIM to argue the confusion criterion.

Now, this applies to mainly Canadian law. When we look at the American side, RIM has absolutely no chance. BBM Canada holds 3 Registered Trademarks on BBM/BBM/BBM Canada, see here from the US PTO: http://tess2.uspto.gov/bin/showfield?f=toc&state=4003%3Aaisdkb.1.1&p_sea...

Furthermore, the argument that the trademark was not rejected outright is a bold claim to make by RIM, considering BBM Canada submitted a document from the CIPO stating that RIM's application for the BBM trademark was rejected. Last time I checked, it's either a Yes, or a No. They can appeal it, which again they failed to mention. RIM is being misleading here.

Furthermore, BBM Canada attempted to make a good faith effort to resolve the issue by offering to rebrand itself, provided that RIM pay for the rebranding. A fair trade, that probably would have cost well under a million. The lawyer fees that RIM will spend fighting this court battle will be well into the millions-- a stupid move, if you ask me. The arrogance of Jimbo and Mikey is becoming too much-- taking someone's trademark, attempting to register it, getting denied and using it anyways?

Anyways, I'm not picking sides, but you BB lovers need to open your eyes and think objectively. RIM stands to fight an uphill battle in Canada, and in the US, it's game over.

RIM, you're move. RIM Rider has made his.

RIM Rider out.

"Come ride, ride, ride this biatch into the DEEP ABYSMAL DEPTHS of the ETERNAL FIRE!"

Makes way more sense than stealing trademarked names like QNX and BBM and launching a tablet with no native mail client and pushing a smartphone launch by half a year to wait for a chip so that the phone will be outdated.

Seriously, bullying a small organization so that they go out of business is not something to be proud of.

'Bout time RIM fought back. Enough's enough. RIM needs to make an example of this little upstart and destroy them. I am so tired of the constant attacks on RIM, it's time RIM started to attack back, and fight fire with fire.

That's awful...considering that the organization provides television and radio broadcast data for government's references concerning regulations. Quite awful to snatch someone's name and destroy them.

This statement reminds me of a similar statement that I heard reciently from a canadian smartphone manufacturer about the abreviation that they were using for the next generation of phones that they are releasing (not soon enough)

I don't see what the issue is.. Ok fine so some dimwitt got confused and pulled the CEO and some of it's employees' emails of some broadcast company out of his ass(not really sure where they would have found it else where doubt a CEO will have his email broadcast.. But anyway) and mailed the wrong ppl.. Seriously.. Pressing the delete button's not that much of a hassle.. And I might be wrong.. But I don't see a trademark symbol anywhere near a bbm acronym.. Where you can download bbm on the web site you do how ever have BlackBerry® Messenger which looks about right to me.. Besides.. If they are going to start bitching about every acronym that resembles some company's name somewhere.. There are gonna be alotta cases to come to ppl every where.. But then.. Maybe that's just me..

I hope RIM comes out ahead on this one, however the Bureau of Broadcast Measurement has been around for a LONG time. Best of luck, RIM!

If RIM destroyed these fools it would really send a message that they aren't playing around anymore. Get it done RIM.

That was exactly my argument in the othee article. RIM went in...hopefully they get tp keep BBM trade mark. honestly that should of been the same argument for BBX

that was the same argument they used for BBX against Basis International, and that was exactly why the court issued an injunction preventing RIM from using the name "BBX".

Now that there was a precedent set with the whole BBX issue, so there's a good chance RIM may be told to stop using BBM. Bottom line is everyone who uses it is still gonna use BBM...

"Hey BBM me later!" No one is gonna start saying "Hey BlackBerry Messenger me later!" Lol

The thing with this one is that it has always been blackberry messenger officially, the term bbm originated with the users a long time before rim also started to use that term, so the damage has already been done as far as perception and this other company probably realise they are going to end up having to change their name due to the inherent confusion that now exists and was not caused by rim, they are simply trying it on to get rim to pay out for costs they will need to spend even if rim caved on the acronym because to a vastly wider audience even in Canada bbm will equate to blackberry messenger so they will continue to get bb messenger related contacts disrupting them anyway.

Hopefully rim sticks to their guns on this one and let's this other lot cave because even if they somehow won, bb users are still going to use bbm as the standard acronym anyway and nothing will be solved for this company by stopping rim from using it.

Seriously, it really doesn't matter if RIM will be calling their Blackberry messenger BBM or not.
The customers will be calling it BBM, and they won't stop calling it BBM. Even if from now on their press releases call it Black Berry Messenger, the general public will still be using the abbreviation, BBM.