RIM gets kicked while down, sued over BBM trademark (update: RIM comments)

It's been a long December for RIM, and there's reason to believe this year won't be any better than the last. This month, the company was sued for its use of the BBX trademark and was forced to change its name to BlackBerry 10; then, it all hit the fan when co-CEO Mike Lazaridis broke the news that phones running the aforementioned OS won't arrive until late in 2012. And let's not even get started on the quarterly earnings report. Sadly, it's not over: BBM Canada, a Toronto-based broadcast industry group that has used the BBM moniker in one way or another for six decades, wants to reclaim its name -- used and made popular by RIM's BlackBerry Messenger service -- and has filed a lawsuit against the phone maker for trademark infringement. BBM Canada CEO Jim MacLeod says he's made several attempts to resolve the matter with them in hopes of avoiding the courtroom -- even to the extent of offering to rebrand his own company as long as RIM footed the bill -- to no success.

MacLeod told The Globe and Mail that "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." And according to court documents, it actually was: in February 2010, RIM attempted to apply for the BBM trademark with the Canadian Intellectual Property Office, was told that it wasn't registerable, and still went ahead and used it for its BlackBerry Messenger service anyway. We'll see what kind of explanation the company has for going ahead and using the three-letter acronym in a couple weeks, since a hearing has been scheduled for January 11th.

Update: RIM just sent us an email with an official statement regarding the matter:

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.

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