Infringement proceeding dealt with for the first time by way of application
In BBM Canada v Research in Motion (2012 FC 666, May 30 2012), the Federal Court of Canada has rejected BBM Canada's claim of trademark infringement, passing off and depreciation of goodwill.
BBM Canada has used the trademark BBM (an acronym for 'Bureau of Broadcast Measurement') in Canada since 1944 in association with the measurement of circulation, coverage and audience of all types of advertising media. Its customers are advertisers, as well as advertising and broadcast agencies. In 2010 Research in Motion (RIM) started to use 'BBM' as an acronym for its Blackberry Messenger service, prompting BBM Canada to seek relief for trademark infringement, passing off and depreciation of goodwill.
Actions are complex proceedings involving a lengthy examination process in which each party is required to produce relevant documents and make available a representative for oral examination, leading up to a trial. The Federal Court’s goal is to hold a trial within two years of the commencement of an action, although, in practice, it often takes longer to reach trial.
An application, on the other hand, is an expeditious proceeding commenced by a notice of application. Evidence is based on affidavits and cross-examination on those affidavits. Written arguments are exchanged and a hearing is held before a judge. Unlike a trial, there is no testimony from witnesses at the hearing.
The timeline in this case confirms that an application can be used to secure judgment quickly. BBM Canada commenced its application in August 2010. Shortly thereafter, RIM moved for an order dismissing the application on the basis that an allegation of trademark infringement must proceed by way of an action. The Federal Court of Appeal held that trademark owners may commence proceedings for infringement, passing off or depreciation of goodwill by way of action or application, but added that it may be possible to move for an order converting an application to an action in appropriate circumstances.
RIM then brought a motion to convert the application to an action, but the motion was dismissed in a decision issued in July 2011. The application was finally heard on the merits in January 2012 and a decision issued on May 30 2012. In other words, a judgment was issued within two years of the commencement of the application, but most of this time was consumed by procedural issues that settled a novel question of law. All of this suggests that a trademark infringement application could be heard by a court within a few months of the commencement of the application.
Turning to the merits of the application, a key issue was the appropriate universe of consumers to consider when assessing the likelihood of confusion arising from RIM’s use of BBM. BBM Canada collects ratings data from members of the public that it recruits to record their television viewing and radio listening. The ratings data is then supplied to BBM Canada’s customers. BBM Canada submitted that the recruits should be included in the relevant universe of consumers. The court found that the relevant universe did not extend to recruits, but rather to the consumers of the goods or services. Since BBM Canada does not perform its services for potential recruits, the relevant universe of consumers was limited to advertisers, as well as advertising and broadcast agencies.
Although the mark BBM used by RIM is identical to the mark registered by BBM Canada, and BBM Canada had used its trademark much longer, the court determined that there was no likelihood of confusion for the following reasons:
- Acronyms are entitled to limited protection. BBM Canada’s monopoly on the use of the acronym BBM was held to be limited to its broadcast measurement services within the broadcasting and advertising industries.
- RIM and BBM Canada are not competitors and RIM’s BlackBerry Messenger service does not overlap with BBM Canada’s sophisticated market research services.
- While the likelihood of confusion is usually assessed as a matter of first impression in the mind of a hurried consumer, there are certain types of services which are not purchased in a hurried manner and sophisticated consumers are unlikely to be confused. Since the nature of BBM Canada’s trade in data collection is sophisticated and it has close relationships with its customers, its customers were not likely to be confused.
Since there was no likelihood of confusion arising from RIM’s use of BBM, BBM Canada’s claim of trademark infringement was rejected by the court. BBM Canada likewise failed to prove passing off and depreciation of goodwill.
While BBM Canada was ultimately unsuccessful in its application, it has paved the way for trademark owners to seek expeditious and cost-effective relief for violation of their trademark rights in Canada. However, since all evidence in an application is by way of affidavit and there is no examination for discovery, the decision serves as reminder that trademark owners must ensure that their affidavits set out the entire case clearly and in sufficient detail to support the allegations. Further, not every case will be suitable for the application process - the decision as to whether or not to proceed by way of application will be very much dependent on the circumstances of each case.
Robert A MacDonald and Peter Eschlboeck, Gowlings, Ottawa and Toronto
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