Orange County - Research in Motion, LTD ("RIM"), the Canadian telecommunications giant who produces the BlackBerry smartphone, filed a motion for dismissal of a trademark lawsuit against their commonly used BlackBerry Messenger acronym, "BBM." The lawsuit filed earlier this month by BBM Canada, a Toronto-based radio and broadcasting company, alleges that the "BBM" name used by RIM causes confusion with its clients and employees.
BBM Canada was founded in 1944 and changed its name to BBM in the 1960s before settling on BBM Canada in the early 1990s. BBM Canada provides data and audience measurement analysis for radio and television broadcasting across Canada. BBM Canada currently employs 650 people with $50 million in annual financial revenue as opposed to RIM who employs 17,000 people and had $5 billion in revenue last quarter. BBM Canada's Chief Executive Officer, Jim Macleod, argues that small size of his company should not be a factor, "I'm sure to a really big company this looks like relatively small numbers, but to us it's a big deal."
Another issue is the global reach of Blackberry Messenger that has defined the acronym "BBM" in Canada and abroad. RIM boasts 50 million users worldwide of their BlackBerry smartphones and messenger service. MacLeod understands his company's limitations, "We have to be practical, they operate worldwide, we don't. But we're not prepared to just walk from our name." MacLeod argues that within Canada, he is often mistaken for a RIM executive and BBM Canada call operators receive up to 250,000 calls a year from Canadians who similarly mistake BBM Canada for RIM.
In a statement by RIM, they contend that they should be allowed to use the "BBM" acronym because "the two companies [RIM and BBM Canada] are in different industries and have never been competitors in any area." RIM also argues that under Canadian trademark law, two trademarks are eligible to co-exist if the services do not overlap. It's one of debate how separate and divergent the industries are for RIM and BBM Canada.
The Canadian Intellectual Property Office (CIPO) also weighed on this lawsuit by filing a letter to the court stating the "BBM" trademark does not appear to be registrable after it denied RIM's trademark application for "BBM" in 2009. RIM maintains that its trademark application is still pending and that any "inference by BBM Canada that CIPO has refused RIM's BBM trademark application is quite frankly very misleading." McLeod disagrees with RIM's assessment of its trademark application with CIPO arguing that while RIM filed an extension of its trademark application in 2009, they have not pursued the matter any further.