BBM Canada, a company also based out of Canada, is claiming trademark infringement for the use of “BBM” in RIM’s BlackBerry Messenger campaigns. Back in October, RIM revealed BBX as the name for their new QNX-based platform, shortly thereafter, a US court decision forced them to rename to “BlackBerry 10″ due to trademark infringement filed by a company that develops software, aptly named “BBX”. Fast forward a few months, and RIM is in an extremely similar situation. The BlackBerry team has been heavily marketing and branding themselves with the “BBM” moniker for the past few years, it’s quite obvious that the recent swarm of lawsuits over IP and trademarks has awoken many companies to the money that can be made.
The issue has become quite a public one, numerous statements have been made by both RIM and BBM Canada with regards to their concerns. The President and CEO of BBM Canada, Jim MacLeod, said We want our name backâ€¦ 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..
The two companies will be in court early January 2012 to plead their cases, RIM has provided a press release which indicates they very much plan to fight for their right to use the acronym.
RIM Media Statement BBM Trademark Litigation: December 23, 2011
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.
With low profits in Q2 2011, RIM is going to have rely on throwing weight around, instead of money, to resolve the trademark infringement case. With all the lawsuits happening in the mobile sphere, it’s really not surprising that innovation has taken a back seat. They’ve found a way to make money, without actually shipping any products. Maybe RIM should hire a few interns whose sole job is to Google new product names, to ensure there won’t be any conflicts.