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Federal court rules RIM's use of BBM doesn't infringe on trademark rights

(Stock image)

(Stock image)

Published on June 1, 2012
Published on June 1, 2012
The Canadian Press ~ OBJ  RSS Feed

A federal court has ruled that Research In Motion Ltd. can continue to use the term BBM for its BlackBerry Messenger service, despite the fact that BBM Canada says it is infringing on its 68-year-old trademark.

Topics :
BBM Canada , TSX , Federal Court , Canada , Waterloo

The court sided with RIM and found that there is no confusion between the companies, and therefore no infringement because the companies operate in different sectors.

But BBM Canada says its lawyers are reviewing the finding and considering whether to appeal.

RIM (TSX:RIM) coined the term BBM for its popular text messaging service in 2010 after it learned that many users were already using the acronym to refer to the instant messenger service it started in 2005.

The term was used in print and television ads.

The court dismissed BBM Canada's claim that RIM's use was creating confusion among its clients, saying that BBM Canada's trademark extends only to the field of broadcast measurement services.

"We are pleased that the Federal Court of Canada sided with RIM and confirmed that RIM's use of BBM does not infringe the trade-mark rights of BBM Canada as they had alleged," RIM spokeswoman Tenille Kennedy said of Wednesday's judgement.

But Jim MacLeod, president and CEO at BBM Canada, a media monitoring and ratings company that filed a trademark infringement lawsuit against RIM about a year and a half ago, said Thursday its lawyers are reviewing the finding and may decide to file an appeal.

"These things are skirmishes in the war, so I don't know if this is over or not," MacLeod said, adding that the company originally tried to settle the dispute out of court.

"There was a huge marketing campaign and we started running into quite a bit of confusion," when the company would dial radio and TV stations for their surveys, he said.

"We were very concerned about this and we remain concerned, frankly."

The ruling in RIM's favour came amid a grim week for the beleaguered company.

RIM shares took a beating this week after the Waterloo, Ont.-based company announced Tuesday it hired two outside firms to advise on its troubled business and financial performance.

The company also projected an operating loss in the current quarter and warned it will cut staff throughout the year.

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