Trademark Law

The BBM trademark and Research in Motion

Finally some good news for Research in Motion this morning, as the Federal Court dismissed a lawsuit by BBM Canada challenging the use of the trade-mark “BBM” by Research in Motion Limited (RIM) in the promotion of its BlackBerry Messenger service.

The court held that BBM Canada, offering “BBM” as a specific brand of broadcast measurement services, is not entitled to a broader monopoly outside the broadcasting and advertising industries even though it had been using its trade-mark much longer than RIM, as the nature of the products 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 for a narrow and distinct group of consumers in the advertising and broadcast media industry, while RIM makes smartphones intended for the general public. The court also found no evidence of actual confusion by consumers, no finding of passing off and no depreciation of goodwill.

This decision was rightly decided, in my view, as generally the nature of the products and services used in association with a trademark defines the scope of the trademark monopoly.  BBM Canada doubtlessly knew this from the beginning.  Perhaps BBM Canada thought its use of the mark since 1944 gives it a fighting chance at a the court recognizing a broader scope for its trademark.  In this case, they were wrong.

Trademarking a sound in Canada

Great news for marketers, as starting today, the Canadian Intellectual Property Office will accept trademark applications for a mark consisting of a sound.

This means that previously unprotected marketing materials such as jingles, vocal slogans, and song snippets that are used to identify with a brand can now be under trademark protection in Canada.

To register a sound mark, the application for the registration of a trade-mark should:

  1. state that the application is for the registration of a sound mark;
  2. contain a drawing that graphically represents the sound;
  3. contain a description of the sound; and
  4. contain an electronic recording of the sound.

Changes to rules regarding .ca domain disputes

The Canadian Internet Registration Authority (CIRA) recently announced changes to the CIRA Domain Name Dispute Resolution Policy (CDRP). The CDRP, which governs disputes over .ca domain names alleged to be registered in bad faith, has been in effect since 2002.

Some of the changes include:

  • Bad Faith “Legitimate Interest Factors” are now Non-Exhaustive.
  • Bad Faith Factor of Commercial Gain Added.
  • Electronic Filing of complaints and respondent submissions.
  • Separation of Filing Fees from Panellist Fees.
    • “Previously, Complainants were required to pay the entire $4,000 filing fee upon filing a CDRP complaint. Under the revised CDRP Rules, Complainants are now only required to pay the Dispute Resolution Provider fee of $1,000 to file a complaint.”

The revised CDRP rules come into effect August 22, 2011.

Trademark registration and a search for prior use

Your brand is a way for your customers to identify and distinguish your goods and services from that of some else’s goods and services. Businesses therefore safeguard their brand with the registration of one or more trademarks.

When registering for a trademark, it’s important to do a search to find out if there’s another party that may also be using a confusingly similar mark somewhere else in Canada.

As the Supreme Court of Canada held last week in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, in order for the owner of a registered trademark to have exclusive use of the trademark throughout Canada, there cannot be a likelihood of confusion with another trademark anywhere in the country.

In view of this recent ruling, it is recommended that a search be done before filing for a trademark registration in order to properly determine whether or not the registration is likely to succeed.

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