Mr. Justice Near of the Federal Court recently dismissed BBM Canada’s challenge to the use of the trade mark “BBM” by Research in Motion Limited (“RIM”), in the promotion of the BlackBerry Messenger service. This decision highlights the importance of determining the appropriate universe of consumers and potential consumers of the trade mark owner, as confusion is to be judged in that universe.
BBM Canada (which was formerly known as the Bureau of Broadcast Measurement) is a not-for-profit corporation with members in the broadcasting and advertising industries. BBM Canada supplies television and radio ratings data and analysis to broadcasters and advertisers as well as government agencies and certain other organizations. BBM Canada collects ratings data from members of the public who record, either in a diary or electronically, what they watch on television or listen to on the radio. This data is then aggregated and analyzed by BBM and provided to broadcasters and advertising agencies, who use the data to trumpet the popularity of TV and radio shows.
BBM Canada had amassed a portfolio of nine registered trade marks that include the acronym BBM. These trade marks were registered with fairly narrow services – for the most part the “impartial measurement of circulation, coverage and audience of all types of advertising media” and “market research services.”
As anyone even casually acquainted with a teenager will know, RIM’s BlackBerry Messenger service is a highly popular instant messaging service that allows persons with BlackBerry devices to send and receive text messages, photographs, videos and similar electronic information and data. Upon learning that many of its customers were referring to the BlackBerry Messenger service by the acronym “BBM”, RIM began using that acronym to promote the BlackBerry Messenger service in or about June 2010. This promotion included a series of print ads in the Toronto subway system, television ads and an online contest.
BBM Canada contended that it had been mistaken for BlackBerry as a result of RIM’s BBM promotions – a theory that is often termed reverse confusion. For example, when contacting members of the public to act as diary keepers, BBM Canada personnel were asked if they were representing BlackBerry. One of BBM Canada’s subsidiaries received “at least one” request for support for RIM’s BlackBerry Messenger service and, perhaps most galling, when BBM Canada employees at a restaurant mentioned to their server they worked for BBM Canada, she motioned to her BlackBerry.
Under the Trade-marks Act, confusion between two trade marks occurs where the use of both trade marks in the same area would be likely to lead to the inference that the wares or services associated with those trade marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. Whether or not confusion is likely is to be determined by reference to the persons who are likely to make a purchase of the wares or services of the trade mark owner – in particular those likely purchasers who have an imperfect recollection of the trade mark. Mr. Justice Near stated that the consumers of BBM Canada’s services “are a defined group of advertisers as well as advertising and broadcasting agencies” most of whom were longstanding members of BBM Canada. He stated that if a likelihood of confusion is to be found, it must be found from amongst this group as opposed to potential recruits from the public to assist in data collection.
Under the Trade-marks Act, in determining whether two trade marks are confusing, regard shall be had to all the surrounding circumstances including the nature of the marks themselves, the length of time the marks have been in use, the degree of resemblance between the marks and the nature of the wares and services. While clearly BBM is the same as BBM, the judge held that was not enough for a finding of confusion. In particular, Mr. Justice Near focussed on the respective wares and services, stating as follows:
However, the nature of the wares and services provided by BBM Canada and RIM vary significantly. BBM Canada’s focus is on impartial measurement of ratings data and sophisticated market research. These are narrowly defined services for a distinct group of consumers in advertising and broadcast media.
RIM does not engage in data collection or market research in competition with [BBM Canada]. RIM's products and services are intended for a broad range of consumers from among the general public. It manufactures smartphones and related applications, such as BlackBerry Messenger. According to RIM, its promotion of BBM was always accompanied by its own name and reference to BlackBerry devices.
Justice Near gave short shrift to BBM Canada’s purported evidence of actual confusion – an email requesting support for BlackBerry Messenger applications and a server at a restaurant pointing to her BlackBerry device. The judge stated that it was unclear whether these individuals would interact with BBM Canada at some point in the future and that no broadcast measurement services were being offered at the time.
This decision is the latest example of the Federal Court looking closely at the wares of the trade mark owner in determining whether there is any real likelihood of confusion. While the test in assessing confusion is a matter of first impression in the mind of a casual consumer somewhat in a hurry, it is not, as colourfully put by an English judge, judged on the basis of “a moron in a hurry.”
BBM Canada has appealed this decision, so we will have to wait and see whether the Federal Court of Appeal counts BBM Canada in or out.