BlackBerry Messenger is a far more well-known service than the data collection and distribution services of a company called BBM Canada. Nevertheless in trade-mark law the victory in any dispute does not necessarily go to the party who is the most well-known. Rather, being the first one to use a trade-mark is usually a stronger card to play. And if you have many cards proving first use, so much the better.
That was the position of BBM Canada in respect to the trade-mark “BBM”. BBM Canada had used the trade-mark “BBM” long before RIM began. BBM Canada decided to assert its rights to the “BBM” trade-mark by launching a lawsuit.
Who is BBM Canada?
If you don’t know who BBM Canada is, you’re not alone. BBM Canada originated in 1944 as a co-operative of broadcasters, advertisers, and advertising agencies under the name “The Bureau of Broadcast Measurement. It changed its name to BBM Canada in 2002.
BBM Canada operates as a not-for-profit corporation with voting members in the broadcasting and advertising industries. It supplies impartial television and radio ratings data and analysis. Ratings data is collected from members of the public recruited to use an electronic device or BBM Canada diary to record their television viewing and radio listening.
Since 1944 BBM Canada has employed several logo designs containing the letters “BBM”. In 1975 it began to use the “BBM mark design”. BBM Canada has nine (9) registered trade-marks which it uses in connection with data collection and distribution services. The majority of the registered trade-marks are associated with services related to the “impartial measurement of circulation, coverage and audience of all types of advertising media” and “market research services”.
Who is RIM?
This question doesn’t really need answering. But for the purposes of understanding this dispute, the court held that RIM is a designer, manufacturer and marketer of wireless solutions for the global mobile communications market.
Since July 2005, RIM has made the instant messaging service, BlackBerry Messenger, available for exclusive use on its Blackberry brand devices. BlackBerry Messenger allows users to send and receive text messages and share photographs, videos, and music. The court talked about the extensive marketing that RIM had done for the BlackBerry Messenger. Around June 2010, RIM began using the acronym “BBM” to refer to BlackBerry Messenger.
BBM Canada claims that as a result of RIM’s marketing campaign for BlackBerry Messenger or “BBM”, BBM Canada has been mistaken for RIM. Personnel of BBM Canada recruiting members of the public to act as diary keepers were asked if they represented RIM. BBM Canada received at least one request for support for RIM’s BlackBerry Messenger. When employees at a restaurant mentioned they worked for BBM Canada, the server motioned to her Blackberry device. Radio hosts have also begun to use the term “BBM” on air in describing communications using BlackBerry Messenger.
It was the Trade-marks Office that emboldened BBM Canada into believing that there could indeed be confusion with BBM Canada’s registered trade-marks and RIM’s BBM trade-mark. When the Trade-marks Office initially examined RIM’s trade-mark application for “BBM”, it said that the mark did not appear capable of registration as it appeared to be confusing with some of BBM Canada’s registered trade-marks.
As a result of the letter from the Trade-marks Office, BBM Canada requested that RIM stop using the “BBM” trade-mark. When RIM failed to do so, BBM Canada launched an application with the Federal Court.
BBM Canada asserted that confusion is likely to occur between its “BBM” marks and RIM’s use of BBM, as there is overlap between the associated services in advertising and marketing, in particular, where RIM provides services such as podcasting of broadcasting agencies linked to BBM Canada. If both marks are used at the same time, the impression that BBM Canada and RIM are linked could affect BBM Canada’s role as an impartial compiler of data. Furthermore, incidents of actual confusion pose difficulty in the recruitment of diary keepers for BBM Canada. The mention of “BBM” on radio or television referring to RIM could also lead to ratings bias.
RIM answers back arguing that BBM Canada is not entitled to protection for the use of “BBM” beyond its narrow range of services in impartial broadcast measurement; services that RIM does not provide in association with the BlackBerry Messenger service.
Is RIM’s Use of “BBM” Likely to Cause Confusion with the Registered Trade-marks of BBM Canada?
According to the court, whose opinion is the only one that matters, BBM Canada has to establish a likelihood of confusion and not a mere possibility.
The court says that the group of consumers, from whose perspective confusion should be assessed, are those who currently use BBM Canada’s services; namely, a defined group of advertisers, advertising and broadcasting agencies, Statistics Canada, and the CRTC.
In assessing whether RIM’s trade-mark may be confusing with those of BBM Canada, the court says that the mark “BBM” is more distinctive of RIM and has become more well-known because of RIM. Furthermore, the court says that trade-marks based on initials are only entitled to a narrow ambit of protection. The court notes that RIM began to use “BBM” in June 2010, while BBM Canada has used “BBM” since 1944.
The court finds that BBM Canada’s registered trade-marks have only limited brand recognition, as BBM Canada does not advertise to the public and its own rules prohibit the mention of “BBM” in broadcasting media.
Ultimately what sways the court to conclude that no confusion will result from using the trade-marks at the same time is that the nature of the wares and services provided by BBM Canada and RIM vary significantly. BBM Canada provides narrowly defined services for a distinct group of consumers in advertising and broadcast media. Meanwhile RIM does not engage in data collection or market research in competition with BBM Canada. RIM’s products and services are intended for a broad range of consumers from among the general public.
The court holds that the nature of BBM Canada’s trade is highly significant as it is distinct from that of RIM who operates in a smartphone market targeting a wide range of consumers. The court does not believe that a broadcaster purchasing ratings data exclusively from BBM Canada would necessarily approach RIM believing it also provides these services. The court says that trade-mark law does not assist BBM Canada in asserting entitlement beyond the specific services and markets for which protection was intended.
Does RIM’s Use of “BBM” Constitute Passing Off to the Detriment of BBM Canada?
The court says that for BBM to establish that RIM is passing off its goods under the BBM trade-mark to the detriment of BBM Canada, there must be evidence that advertising or broadcasting agencies would assume there is a link between BBM Canada and RIM as a result of the use of “BBM”.
The court rules that BBM Canada has not shown that RIM intentionally or negligently misled consumers into believing its business originated with BBM Canada and that BBM Canada suffered damage as a result. Further, there is no evidence that BBM Canada has lost business or any goodwill from among its members in the advertising and broadcasting industries as a result of RIM’s activities.
Does RIM’s Use of “BBM” Depreciate the Goodwill in BBM Canada’s “BBM” Trade-mark?
The court ruled that BBM Canada did not establish goodwill with the general public such that an individual would make a link or connection to BBM Canada because of RIM’s advertisement of Blackberry Messenger using “BBM”. The court said that the distinctiveness of BBM Canada’s brand in impartial measurement or market research services is not eroded among its market in the advertising and broadcasting industries; BBM Canada remains the sole provider of those services among its members.
Even where two trade-marks are identical and one has been used for far longer than the other, a significant difference in the nature of the respective trade-marks’ wares and services and the end consumer may mean the trade-marks can co-exist without any confusion.
* * * * *
Ryan K. Smith is a lawyer and trade-mark agent at Feltmate Delibato Heagle LLP. He specializes in corporate and commercial law with expertise in intellectual property matters including trade-marks, copyrights, privacy, information technology, and confidential information. You can reach Ryan at firstname.lastname@example.org and (905) 287-2215