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RIM faces new trademark fight over messenger service name Add to ...

In early December, a United States court barred Research In Motion Ltd. from calling its new operating system “BBX” because of a trademark dispute. The company renamed it “BlackBerry 10.”

But next month, the Waterloo, Ont. smartphone giant faces a much more important trademark battle in a Toronto courtroom. It will try to defend its ability to use a trademarked three-letter term that, unlike BBX, is out in the marketplace and has immense global value to the company: BBM, short for BlackBerry Messenger, a popular service with about 50 million users around the world.

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Executives at Toronto-based BBM Canada, a broadcast industry group, who say they launched a court proceeding against RIM after attempts to negotiate failed, are pointing to the BBX ruling as they prepare for their Jan. 11 hearing.

“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.”

The lawsuit has the potential to endanger the branding around one of RIM’s most valuable products – the instant messaging service is popular with text-crazy teenagers, adults and millions of consumers in emerging markets who use it to circumnavigate costly texting fees charged by wireless carriers.

The service has been a core piece of RIM’s brand, and is a linchpin of the company’s global expansion. In 2010, it began an aggressive advertising campaign that referred to BlackBerry Messenger only as BBM.

Since 1944, an industry group of broadcasters, advertisers and ad agencies has operated as the Bureau of Broadcast Management, a name later changed to BBM Bureau of Measurement and then BBM Canada. The group uses bbm.ca as its website and for its e-mail addresses, has used the letter combination BBM in its logo for more than six decades and owns the trademarks in both the U.S. and Canada. It collects data on the television and radio industries – used by Statistics Canada and the Canadian Radio-television and Telecommunications Commission – by calling about 250,000 Canadians each year.

In 2010, when RIM began the BBM-focused advertising campaign, the company applied for a “BBM” trademark, but was advised by the Canadian Intellectual Property Office, in a letter dated Feb. 24, 2010, that the trademark “was not registerable,” according to court documents.

Mr. MacLeod said he first saw the BBM advertisements when he threw back hotel curtains in New York City and saw a building-sized ad gleaming across Times Square. Soon after, BBM Canada said its own employees started being mistaken for RIM employees, and that people began phoning its subsidiary company – BBM Analytics Inc. – for client support related to RIM’s messenger service.

The executive said he is well aware that RIM is massive compared to his own relatively unknown organization, and that it would be easier for BBM Canada to rebrand itself than for RIM to rebrand a fast-growing service with tens of millions of users. Mr. MacLeod said he offered to rebrand BBM Canada, if RIM covered the costs, but says he received no answer. A request for a meeting with one of RIM’s chief executives was similarly unsuccessful.

After reaching out to RIM and getting nowhere, Mr. MacLeod said BBM Canada was forced to file a lawsuit alleging trademark infringement, which it did on Aug. 12, 2010. The industry group is seeking an injunction stopping RIM and its employees from using the term BBM, as well as damages for infringement and punitive damages.

A RIM spokesperson said the company doesn’t comment on pending litigation.

The BBX and BBM cases are not related, but one source close to RIM said the company’s legal department advised top executives that BBX was trademarked and that the company should pursue a different name. The decision to disregard that advice, the source added, would almost certainly have had to come from one of RIM’s top executives.

“We don’t want to pile on the troubles of RIM – this predates RIM’s troubles – but from our point of view, this is a very serious situation,” Mr. MacLeod said. “If the big guy who can throw the most money at it can take your trademark, why do you even have trademark law?”

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