On January 11, Research in Motion went head to head with BBM
Canada to defend against BBM Canada's allegations of trademark
infringement over the use of the mark "BBM" in connection
with RIM's BlackBerry Messenger service.
The Federal Court of Canada heard hours of legal argument from
both parties and has reserved judgment pending written
BBM Canada, established as the Bureau of Broadcasting
Measurement in 1944, is seeking an injunction to prevent RIM from
using the BBM mark in Canada, plus $15 million in damages ($5
million of which are punitive).
Under Canadian trademark law, identical marks are entitled to
co-exist, provided that such marks represent wares or services in
different channels of trade. The general test is whether the
average Canadian consumer would confuse one mark with the other.
For example, in 2006, the Supreme Court of Canada held that there
was no material likelihood of confusion between a Montreal-based
restaurant called "Barbie's" and Mattel, Inc.'s
iconic "Barbie" dolls.
The primary question to be answered by the court is whether the
marketplace for BlackBerry Messenger and BBM Canada overlap in any
way. RIM has
steadfastly held that it and BBM Canada: "...are in
different industries and have never been competitors in any area.
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
RIM clearly feels confident in its case, as it has not yet
settled the dispute with BBM Canada. However, a settlement is still
possible between the parties before the judge releases his written
decisions, which should be within a matter of months. BBM Canada
indicated a willingness to change their name, for a price.
As it considers whether or not to settle, RIM must also be
considering its recent legal battle over the BBX moniker for its
operating system, which it now must refer to as BlackBerry 10,
pending a final judgment in a separate dispute.
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The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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