Recently the Federal Court of Canada dismissed BBM Canada's trade-mark dispute with Research in Motion ("RIM") over RIM's use of the trade-mark BBM in association with its BlackBerry Messenger service.
This case was the subject of an earlier IP Monitor in which we reported on the Federal Court of Appeal's holding that nothing precluded BBM Canada from bringing its claims for relief under the Trade-marks Act by way of application. While RIM did bring a subsequent motion to have the proceeding converted into an action, that motion was dismissed and the proceeding continued as an application.
This case highlights the Trade-marks Act's commercial nature and role in consumer protection. It also discusses the need to carefully identify the relevant consumer group when considering an enforcement proceeding.
BBM Canada, formerly The Bureau of Broadcast Measurement, operates as a not-for profit corporation and supplies impartial television and radio ratings data and analysis to Canadian broadcasters and advertisers, Statistics Canada, and various copyright collective societies. It holds a number of trade-mark registrations for trade-marks incorporating BBM.
BBM Canada brought this proceeding against RIM in order to stop RIM from using the trade-mark BBM in advertising its instant messenger service which BBM Canada claimed caused confusion contrary to the Trade-marks Act. BBM Canada alleged trade-mark infringement, passing off and depreciation of goodwill.
Among the issues raised by BBM Canada, two of its main concerns were that:
- The people BBM Canada tries to recruit to provide data to BBM by tracking their own TV viewing and radio listening are confused by RIM's trade-mark use and require explanation and clarification; and
- Mention of BBM on air introduces ratings bias among those it has recruited to provide data by reminding them to record what they are watching or listening to. Under BBM Canada's policies, member broadcasters are not permitted to mention BBM Canada's name on air in order to avoid this potential bias.
In dismissing BBM Canada's claim, the Court held that while it did not wish to diminish BBM Canada's concerns, they were not concerns addressed by trade-mark law, the purpose of which is to ensure that "consumers know, when they are considering a purchase, who stands behind those goods or services." The Court held that the people BBM Canada recruits to track their viewing activities are not BBM Canada consumers, in that they do not purchase any goods or services from BBM Canada. They are more akin to contractors and therefore are not the relevant consumer group to whom the confusion analysis applies.
A further point of interest is Justice Near's comment that BBM Canada had not provided sufficient detail in respect of references to actual confusion. Having proceeded by way of application, which is often quicker and procedurally limited compared to an action, BBM Canada did not have the benefit of discovery or live testimony at the hearing. It is not clear upon reading the decision whether sufficient evidence of confusion would have been available had the matter proceeded by way of action.
Ultimately, the Court held that confusion was unlikely and dismissed each of BBM Canada's claims.
The Court held that trade-mark law does not assist BBM Canada in asserting entitlement beyond the specific services and market to which its trade-mark was intended.
Link to Decision
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