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The Globe and Mail

RIM asks court to dismiss BBM trademark lawsuit

A BlackBerry handset is displayed in Washington, December 15, 2011.

REUTERS/Jonathan Ernst/REUTERS/Jonathan Ernst

Research In Motion Ltd. has responded publicly to BBM Canada's attempts in court to force the smartphone giant from using the acronym "BBM" to refer to its BlackBerry Messenger service, arguing both companies should be allowed to use the term because "the two companies are in different industries."

In a Globe and Mail article, BBM Canada, a Toronto-headquartered industry body for broadcasting companies, argued that its employees were being mistaken for RIM employees and that members within its organization were being called for client support related to RIM's messaging service – which is widely referred to by BlackBerry users as BBM and is used by more than 50 million people around the world.

In a statement issued to The Globe on Friday, RIM said: "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."

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Since 1944, BBM Canada has provided data analysis to Canadian broadcasters – data which is now used by both Statistics Canada and the Canadian Radio-television and Telecommunications Commission, and is obtained in part through calling Canadians.

In an interview with The Globe earlier in December, BBM Canada's chief executive officer Jim MacLeod said, "We want our name back. I find it kind of amazing that this wouldn't have been thought about before they (RIM) decided to use the name."

Earlier in December, a United States federal court barred RIM from using the term "BBX" to refer to its next-generation operating system, which has since been renamed "BlackBerry 10" and is meant to run on smartphones whose release has been delayed until next year. Many BlackBerry users refer to the popular global messaging service as BBM, but it wasn't until the summer of 2010, BBM Canada alleges, that RIM started using the stand-alone acronym in a marketing blitz that included the Toronto area.

"The two companies are in different industries and have never been competitors in any area," RIM said in the statement. "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."

In court documents obtained by The Globe, BBM Canada argues that RIM filed for the BBM trademark on October 15, 2009, but was denied. A letter from the Canadian Intellectual Property Office (CIPO) was filed with the court, and says the BBM trademark was "does not appear registrable."

In the statement issued on Friday, RIM responded that "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."

In an interview on Friday, Mr. MacLeod said that RIM had applied for an extension to its request in 2009, but that nothing new has come of it. RIM did not immediately respond to a request for clarity on the matter. He also repeated claims he previously made to The Globe about how he and his employees are frequently mistaken for RIM employees, and that BBM Canada is attempting to bring applications, or apps, to various smartphones including BlackBerrys, in order to better enable its data collection.

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"It's ridiculous, we're in the same trade channels – this is the position they took in the first place, that we're in different trade channels," Mr. MacLeod said, who added that he is often mistaken for a RIM executive at hotels and restaurants, and that the BBM Canada operators who make around 250,000 calls each year to Canadians are likewise mistaken.

"I can just imagine what position they'd take if we started calling our handheld devices BlackBerrys," he added, referring to devices that measure radio and broadcast frequencies that have been given out to a further 11,000 people who have agreed to participate in BBM Canada surveys.

When asked about the BBM trademark matter earlier this month, RIM said it typically does not comment on pending litigation. The court hearing is set for January 11, 2012.

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