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Saturday, 24 December 2011 - RIM now faces legal challenge on BBM trademark |
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      Edition: U.S. Africa Arabic Argentina Brazil Canada China France Germany India Italy Japan Latin America Mexico Russia Spain United Kingdom Home Business Business Home Economy Davos 2012 Technology Media Small Business Legal Deals Earnings Summits Business Video Markets Markets Home U.S. Markets European Markets Asian Markets Global Market Data Indices M&A Stocks Bonds Currencies Commodities Futures Funds peHUB World World Home U.S. Brazil China Euro Zone Japan Mexico Russia India Insight World Video Politics Politics Home Election 2012 Issues 2012 Candidates 2012 Tales from the Trail Political Punchlines Supreme Court Politics Video Tech Technology Home MediaFile Science Tech Video Opinion Opinion Home Chrystia Freeland John Lloyd Felix Salmon Jack Shafer David Rohde Bernd Debusmann Gregg Easterbrook Nader Mousavizadeh James Saft Lucy P. 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Mon, Dec 19 2011 BlackBerry delay darkens RIM's future Fri, Dec 16 2011 RIM delays QNX phones, offers dismal outlook Thu, Dec 15 2011 Canada to pull out of Kyoto protocol Mon, Dec 12 2011 Analysis & Opinion 20 ideas for 2012, part 4 M&A wrap: Amazon, Nokia, Microsoft weighed RIM bids Related Topics Tech » Media » A BlackBerry handset is displayed in Washington, December 15, 2011. Credit: Reuters/Jonathan Ernst TORONTO | Fri Dec 23, 2011 3:28pm EST TORONTO (Reuters) - Research In Motion, still smarting over having to change the name of its yet-to-come operating system, faces a similar trademark challenge to its popular instant-messaging service BlackBerry Messenger. The service, which allows BlackBerry users to send each other text and multimedia files and see when they are delivered and read, is widely known and even promoted by RIM via the shorthand BBM. That has proven an encumbrance to BBM Canada, which measures radio and television audience data and expects its day in a Federal Court against RIM by February. The company's chief executive, Jim MacLeod, said he wants RIM to stop advertising the BBM moniker but would also consider changing his much smaller company's name, for a price. "We have to be practical, they operate worldwide, we don't. But we're not prepared to just walk from our name," MacLeod said. RIM seems equally determined to keep using the BBM name and not to pay MacLeod's company anything. "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," it said in an emailed statement. RIM has launched its BBM Music song-sharing service in recent months, and heavily promoted third-party apps that tie into its instant messaging product, which boasts some 50 million active users. BBM Canada was established in 1944 as the Bureau of Broadcast Measurement. It changed its name to BBM in the 1960s and to BBM Canada in the early 1990s, MacLeod said. The company, owned by a collection of broadcasters and advertisers, has annual revenue of around $50 million. RIM's sales were more than $5 billion last quarter. "I'm sure to a really big company this looks like relatively small numbers, but to us it's a big deal," said MacLeod. BBM Canada employs around 650 people, compared with RIM's roughly 17,000. Earlier this month RIM dumped the "BBX" name for its new operating system after being served with an injunction in a trademark fight with U.S.-based Basis International. RIM has renamed the platform as BlackBerry 10. Industry Canada denied RIM's 2009 request to register the BBM trademark, saying the name was already in use, but has granted RIM until January 5 to respond. BBM Canada launched its legal action late last year. MacLeod said his company contacted RIM in July, soon after RIM launched a large-scale BBM advertising campaign. In response to BBM Canada's cease-and-desist letter RIM said there couldn't possibly be any confusion between the two names - a similar tactic was later used in the BBX spat. RIM repeated that line of argument in Friday's statement. "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." MacLeod sought a meeting to discuss the issue with RIM co-CEO Jim Balsillie several months ago, but said he has received no response. McLeod pointed out that RIM had even taken legal action of its own against software startup Kik Interactive over its instant messaging service that includes claims of trademark infringement. "It's a trademark they don't even own, it's ours," MacLeod said. (Reporting by Alastair Sharp; editing by Rob Wilson) Tech Media Related Quotes and News Company Price Related News Tweet this Link this Share this Digg this Email Reprints   We welcome comments that advance the story through relevant opinion, anecdotes, links and data. If you see a comment that you believe is irrelevant or inappropriate, you can flag it to our editors by using the report abuse links. Views expressed in the comments do not represent those of Reuters. For more information on our comment policy, see http://blogs.reuters.com/fulldisclosure/2010/09/27/toward-a-more-thoughtful-conversation-on-stories/ Comments (1) y2kcbr wrote:   Edition: U.S. Africa Arabic Argentina Brazil Canada China France Germany India Italy Japan Latin America Mexico Russia Spain United Kingdom Back to top Reuters.com Business Markets World Politics Technology Opinion Money Pictures Videos Site Index Legal Bankruptcy Law California Legal New York Legal Securities Law Support & Contact Support Corrections Advertise With Us Connect with Reuters Twitter   Facebook   LinkedIn   RSS   Podcast   Newsletters   Mobile About Privacy Policy Terms of Use Our Flagship financial information platform incorporating Reuters Insider An ultra-low latency infrastructure for electronic trading and data distribution A connected approach to governance, risk and compliance Our next generation legal research platform Our global tax workstation Thomsonreuters.com About Thomson Reuters Investor Relations Careers Contact Us   Thomson Reuters is the world's largest international multimedia news agency, providing investing news, world news, business news, technology news, headline news, small business news, news alerts, personal finance, stock market, and mutual funds information available on Reuters.com, video, mobile, and interactive television platforms. 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