BBM Canada brought an application alleging infringement, passing off and depreciation of goodwill with respect to its registered trade-marks by the use by Research in Motion (“RIM”) of ‘BBM’ in association with its Blackberry Messenger service. The Court dismissed the application.
BBM Canada provides impartial television and radio ratings data and analysis to Canadian broadcasters and advertisers, Statistics Canada and the Canadian radio-television and Telecommunications Commission (“CRTC”). BBM Canada recruits members of the public to record their television viewing and radio listening, but is not permitted to mention the name BBM Canada in so doing to prevent bias. RIM was described by the Court as “a designer, manufacturer and marketer of wireless solutions for the global mobile communications market.” Its Blackberry Messenger service was referred to by many customers as “BBM”, after which RIM began to use BBM for marketing in about June 2010.
The Court held that the relevant universe of consumers for the purposes of assessing confusion is the broadcasting and advertising industries, Statistics Canada and the CRTC; the trade-marks are not used for the purposes of section 4 of the Trade-marks Act in communication with its recruits for data collection.
The Court then considered the factors under section 6(5) of the Trademarks Act, and found that confusion is unlikely, and therefore the allegations of infringement failed. The Court also found no passing off and no depreciation of goodwill. The Court concluded that BBM Canada was only entitled to protection in respect of broadcast measurement services.