Federal Court BBMs BBM: 'RIM's Texting Service Is Not Confusing'

Recently the Federal Court of Canada dismissed BBM Canada's trade-mark dispute with Research in Motion ("RIM") over RIM's use of the trade-mark BBM in association with its BlackBerry Messenger service.

This case was the subject of an earlier IP Monitor in which we reported on the Federal Court of Appeal's holding that nothing precluded BBM Canada from bringing its claims for relief under the Trade-marks Act by way of application. While RIM did bring a subsequent motion to have the proceeding converted into an action, that motion was dismissed and the proceeding continued as an application.

This case highlights the Trade-marks Act's commercial nature and role in consumer protection. It also discusses the need to carefully identify the relevant consumer group when considering an enforcement proceeding.

Summary

BBM Canada, formerly The Bureau of Broadcast Measurement, operates as a not-for profit corporation and supplies impartial television and radio ratings data and analysis to Canadian broadcasters and advertisers, Statistics Canada, and various copyright collective societies. It holds a number of trade-mark registrations for trade-marks incorporating BBM.

BBM Canada brought this proceeding against RIM in order to stop RIM from using the trade-mark BBM in advertising its instant messenger service which BBM Canada claimed caused confusion contrary to the Trade-marks Act. BBM Canada alleged trade-mark infringement, passing off and depreciation of goodwill.

Among the issues raised by BBM Canada, two of its main concerns were that:

The people BBM Canada tries to recruit to provide data to BBM by tracking their own TV viewing and radio listening are confused by RIM's trade-mark use and require explanation and clarification; and Mention of BBM on air introduces ratings bias among those it has recruited to provide data by reminding them to record what they are watching or listening to. Under BBM Canada's policies, member broadcasters are not permitted to mention BBM Canada's name on air in order to avoid this potential bias. In dismissing BBM Canada's claim, the Court held that while it did not wish to diminish BBM Canada's concerns, they were not concerns addressed by trade-mark law, the purpose of which is to ensure that "consumers know, when they are considering a purchase, who stands behind those goods or services." The Court held that the people BBM Canada recruits to track their viewing activities are not BBM Canada consumers, in that they...