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RIM gets sued again over BBM trademark, just can’t catch a break

RIM has been in hot water as of late. First, the company loses the right to use BBX as the name for its new operating system and now the company is being sued for using the BBM trademark for its BlackBerry Messenger service. Is RIM being wronged or did they bring this upon themselves?

Just this month, RIM was blocked from using the BBX trademark by the United States Federal Court as the name for the next generation BlackBerry operating system. BBX is currently used by BASIS International for their software. RIM eventually announced that it would be using BlackBerry 10 as the official name for the new operating system.

Now, RIM is being sued by BBM Canada, which is a Toronto-based broadcast industry group that has been using the BBM trademark for over 60 years. RIM currently uses BBM as a moniker for its BlackBerry Messenger service. BBM Canada has filed the lawsuit after claiming that the company was unable to resolve the matter privately with RIM. BBM Canada even offered to re-brand their own company just so RIM could use the BBM trademark, as long as RIM paid for it, but RIM never agreed.

BBM Canada’s CEO Jim MacLeod brought up a great point about RIM. “I find it kind of amazing that this wouldn’t have been thought about before they decided to use the name — the same thing goes for BBX,” MacLeod argued.

The funny thing is, RIM actually attempted to apply for the BBM trademark, but was told that they couldn’t do it due to it already being registered with BBM Canada. RIM went ahead and used the trademark for its BlackBerry Messenger service anyway.

The guys over at EnGadget actually received an emailed response from RIM regarding the matter, take a look at it below:

Since its launch in July 2005, BlackBerry Messenger has become a tremendously popular social networking service. In 2010, RIM started to formally adopt the BBM acronym, which had, at that point, already been organically coined and widely used by BlackBerry Messenger customers as a natural abbreviation of the BlackBerry Messenger name. 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. The two companies are in different industries and have never been competitors in any area. 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. Further, 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.

It is quite obvious that RIM brought this upon themselves. Do you think RIM is way over its head? Let us know in the comments below.

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