RIM’s BBM Service Wins Battle over BBM Canada

The Bureau of Broadcast Measurement (BBM Canada or Applicant) recently challenged the use of the trade-mark “BBM” by Research in Motion Limited (RIM) in the promotion of its BlackBerry Messenger service in an application, BBM Canada v Research in Motion Limited, 2012 FC 666. Justice Near of the Federal Court of Canada (Court) dismissed the application and held that there was no confusion and deemed infringement, passing off or depreciation in the goodwill associated with the Applicant’s trade-mark by RIM’s use of “BBM” to promote its BlackBerry Messenger service. BBM Canada operates as a non-for-profit corporation and supplies impartial television and radio ratings data and analysis to advertising and broadcasting industries. It collects ratings data from members of the public recruited to use an electronic Portable People Meter or a BBM Canada diary to manually record their television viewing and radio listening. RIM is a designer, manufacturer and marketer of wireless solutions for the global mobile communications market, widely known for the BlackBerry handheld wireless device and related software, accessories and services. BBM Canada insisted that as a result of the promotional campaign involving BlackBerry Messenger or “BBM” and related services; it has been mistaken for BlackBerry and therefore asked RIM to cease using the trade-mark “BBM”. After RIM’s refusal, BBM Canada pursued this application and the Court considered the following four issues:

1. Is RIM’s use of “BBM” likely to cause confusion with the Applicant’s registered trade-marks?
2. Has RIM passed off its services as those of the Applicant?
3. Are RIM’s activities likely to depreciate the goodwill associated with the Applicant’s trade-mark?
4. If the response to any of issues 1 to 3 is in the affirmative, is the Applicant entitled to compensatory and punitive damages or the granting of additional relief?

BBM Canada asserted that RIM’s use of the registered trade-mark “BBM” could affect its role as an impartial compiler of data associated with its advertising and marketing services and may lead to rating bias. RIM contended that the Applicant is not entitled to protection for the use of the acronym “BBM” beyond its narrow range of services in impartial broadcast measurement. The Court considered the relevant factors under subsection 6 (5) of the Trade-Marks Act (the Act) and the surrounding circumstances (evidence of actual confusion) to conclude that confusion is unlikely and, as a result, infringement resulting from the use of a confusing mark did not occur in this case. Justice Near emphasized that trade-mark law does not assist BBM in asserting entitlement beyond the specific services and market to which it was intended. The trade-mark in the acronym “BBM” is only distinctive and entitled to a narrow ambit of protection of its specific brand of broadcast measurement services, namely sophisticated market research. Since the nature of the Applicant’s trade to a defined group in the advertising and broadcasting industries differs from RIM in a smartphone market for a much broader range of consumers, the Court concluded that the Applicant’s services do not overlap or lead to direct competition with RIM and thus confusion is unlikely. In order to establish passing off according to section 7(b) of the Act, there must be actual evidence of the existence of goodwill, deception or misrepresentation on the part of the respondent creating confusion with the public as well as actual potential resulting damage. Goodwill in BBM Canada’s registered trade-mark exists in the advertising and broadcasting industries as opposed to the general public and the Court concluded that the Applicant failed to provide evidence supporting that advertising and broadcasting agencies would assume there is a link between the Applicant and RIM through the use of “BBM”. The Court concluded that the Applicant’s allegations regarding passing off must fail because there is no evidence that the Applicant suffered damages or lost business or any goodwill from among its members in the advertising and broadcasting industries as a result of RIM’s activities. In response to the Applicant’s contention that RIM’s activities have led to the depreciation of goodwill in its registered trade-marks contrary to section 22 of the Act, the Court held that the distinctiveness of the Applicant’s brand in impartial measurement or market research is not eroded among its market in the advertising and broadcasting industries, as it is the sole provider of these services among its members. As a result, the Court declined to grant BBM Canada’s registered trade-marks protection beyond the intended scope of its associated services by allowing a claim based on the deprecation of goodwill. Because none of the above issues were found in the affirmative for the Applicant, the Court did not proceed to address the possibility of damages or other relief under Issue This case highlights the importance of defining relevant consumer groups when considering enforcement of a trade-mark and the danger of the narrow ambit of an acronym based trade-mark such as BBM. Summary by: Sumaiya Sharmeen