More trouble for RIM – use of ‘BBM’ name to be challenged in court

BBM-iconIt may be the season of goodwill but it seems no one is cutting Research In Motion any slack.

It’s emerged this week that a company is claiming trademark infringement over RIM’s use of the name BBM, short for BlackBerry Messenger, the popular messaging service enjoyed by millions of BlackBerry smartphone owners.

BBM Canada, a TV and radio audience data specialist, plans to take its case to a Federal Court in the country in the next couple of months, reports Reuters.

Jim MacLeod, the company’s chief executive, said he believes RIM should cease using the BBM name, but alternatively he would think about changing the name of his own company should RIM offer him some monetary incentive to do so.

“We have to be practical, they operate worldwide, we don’t. But we’re not prepared to just walk from our name,” MacLeod told Reuters.

Although the vast majority of people will be more familiar with RIM’s BBM than MacLeod’s BBM, the latter has in fact been around for far longer. Established in 1944 as the Bureau of Broadcast Measurement, it shortened its name to BBM in the 1960s, and then changed it again to BBM Canada in the 1990s.

Of course, the very last thing RIM wants to do is to have to change the name of its messaging service, which it launched back in 2005.

Interestingly, Reuters reports that RIM was denied a request to register the BBM trademark in 2009 because the name was already in use.

In an email statement, the mobile company argued that “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.”

News of the latest dispute comes in the same month that an Albuquerque court issued a temporary restraining order against RIM stopping it from using the BBX name for its next mobile operating system. The Ontario-based company ended up changing the name to BlackBerry 10.

Losing the right to use the BBM name would be a far bigger blow of course, as the product is already firmly established. But if 2012 turns out to be anything like 2011 for RIM, it might just happen.