RIM Prevails in BBM Trade-mark Dispute

Published June 14th, 2012

BBM Canada v. Research in Motion Limited, 2012 FC 666 (Near)

Summary – Lack of overlap in services and distinct industries/consumers amongst parties can result in a finding of no reasonable likelihood of confusion between marks.  This proceeding against RIM for trademark infringement and depreciation of BBM Canada’s registered marks was brought by way of application rather than by way of action.  BBM Canada alleged confusion over RIM’s use of BBM trade-marks in association with smartphone instant messaging services.  BBM Canada claimed RIM’s use of the BBM marks amounted to infringement, passing off and depreciation of goodwill in its BBM marks, all of which were registered in association with broadcast measurement services for television and radio ratings.  The parties are not competitors and their services do not overlap.  Although BBM Canada cited examples of actual confusion by the public of their BBM marks for RIM’s, BBM Canada does not perform services for the general public and had only acquired distinctiveness in the narrow industry of broadcast measurement services.  As the nature of the services of the parties varies significantly, it was held there is no reasonable likelihood of confusion between the marks.  BBM also failed to prove the required elements of passing off and depreciation of goodwill as there was no evidence that it lost business or goodwill as a result of RIM’s activities.  The application was dismissed with costs to RIM.

Analysis – The Applicant, BBM Canada, is a cooperative of broadcasters, advertisers and advertising agencies that originated in 1944 under the name The Bureau of Broadcast Measurement, eventually changing its name to BBM Canada in 2002.  The Applicant’s services relate to the supply of impartial television and radio ratings and associated data analysis which is used by, inter alia, Canadian broadcasters, advertisers and Statistics Canada.  Data is collected from the public through portable meters or diaries and provided to end users in the broadcast industry.

The Applicant owns 9 Canadian Trade-mark registrations for “BBM” marks including BBM and  BBM Design, most of which are associated with “impartial measurement of circulation, coverage and audience of all types of advertising media” and “market research services”.  The Applicant is also the registrant of the domain name bbm.ca.

The Respondent, Research in Motion (“RIM”) is a designer, manufacturer and marketer of wireless communications devices, software, accessories and services.  The Blackberry Messenger service, which became known as BBM, is the Respondent’s instant messaging service which allows users to send messages, pictures, videos and music.  The Respondent began using the BBM trade-mark for these services in Canada in June 2010, launching an intensive promotional campaign using the BBM mark in July 2010.  The Respondent began offering podcast services in September 2010 to BBM users allowing access to radio and television programming.  The Respondent has a pending trade-mark application for BBM that has been objected to based on likelihood of confusion with several of the Applicant’s BBM registrations.

The Applicant alleged that as a result of the Respondent’s BBM advertising campaign it has been mistaken for the Respondent.  Evidence of confusion included at least one inquiry received by an affiliate of the Applicant for support for the Respondent’s BBM service, inquiries to the Applicant’s personnel as to whether they represented the Respondent and comments to the Applicant’s employees at restaurants near the Applicant’s offices about the Respondent’s devices.

The Applicant alleged that confusion is likely to occur between the respective BBM marks of the parties given the overlap in the associated services in advertising and marketing, particularly considering the Respondent’s promotion of Blackberry Messenger.  The Applicant alleged that this is particularly the case given that the Respondent provides podcasts from broadcasting agencies that have links to the Applicant (i.e., agencies that are members of the Applicant or from which data is collected by the Applicant’s services).

The Respondent asserted that the Applicant should only be entitled to a narrow scope of protection of its BBM marks, specifically limited to the services of impartial broadcast measurement.  The Applicant’s customers are primarily its long-standing members in the advertising and broadcasting industry and not the general public that may assist in data collection.  Accordingly, confusion is unlikely.

The Applicant’s evidence of confusion and primary focus of its confusion arguments related to confusion by members of the general public and that this confusion could affect the impartiality of the public when providing data to the Applicant. 

The Respondent argued that the public are not the actual consumers of the Applicant’s services and are rather akin to contractors that are recruited and offered a fee in exchange for acting in a role. 

Near J. noted that while the test for assessing confusion is typically “a matter of first impression in the mind of a casual consumer somewhat in a hurry” [para. 28], as observed by Zinn J. in Atomic Energy of Canada Ltd. v. Areva NP Canada Ltd., 2009 FC 980, not every industry will have a “hurried consumer”. 

Since confusion between trade-marks is to be assessed by the average consumer, i.e., the persons who are likely to make a purchase, Near J. held that the proper consumer to consider in the case were those in the broadcasting and advertising industries, Statistics Canada and the CRTC for whom the Applicant’s data collection services is provided and advertised and not the general public.  Accordingly, the Applicant’s primary consumers are its own members who would be quite familiar with the Applicant’s BBM mark and associated services.  The evidence of confusion relied upon by the Applicant was therefore given little weight as it emanated from the general public rather than actual consumers of the Applicant’s services.

Near J. determined that while the Applicant’s inherently weak acronym BBM marks may have acquired distinctiveness in the field of broadcast measurement services, they do not entitle the Applicant to a broader monopoly of the mark in the general public, particularly considering that the Applicant’s own rules and regulations imposed to ensure impartiality prohibit it from advertising to the public.

The fact that the Respondent’s pending application for the BBM mark had been objected to by the Canadian Trade-marks Office based on likelihood of confusion with several of the Applicant’s BBM marks is not determinative and is merely a preliminary objection that the Respondent has an opportunity to address and revise its application.

Overall, given that the services of the parties vary significantly and considering the narrow scope of the Applicant’s rights in the BBM mark, Near J. concluded there was no reasonable likelihood of confusion between the respective BBM marks of the parties.  The failure of the Applicant to establish likelihood of confusion between the marks was also determinative of the claim of passing off as the evidence did not support that the Applicant’s average consumers would assume a link between the Applicant and the Respondent.  The claim of depreciation of goodwill also fails as the Applicant failed to establish goodwill in the general public and a link between the Applicant and the Respondent where the Respondent advertises its instant messaging services under the BBM mark.

Practice Point – Although degree of resemblance is considered to be the most important factor when assessing likelihood of confusion, when all surrounding circumstances are considered, even where marks are identical and the party asserting infringement has over 10 years of use of its mark in Canada, the lack of overlap in services and distinct industries/consumers served by the parties can result in a finding of no reasonable likelihood of confusion.  Bringing the proceeding by way of application was challenged to the Federal Court of Appeal in 2011 FCA 151, which held that violations of the Trade-marks Act may be brought by way of either action or application.