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Trademark was used by firm for six decades; meanwhile RIM employees start drunken airplane brawl, riot

It's déjà vu all over again.  Embattled Canadian smartphone maker Research in Motion, Ltd. (TSE:RIM) is back in court facing claims that it illegally used another trademark, just weeks after it was forced to rename its next generation operating system after supposedly failing to check whether the name it picked was trademarked.

I. RIM Allegedly Look to Trample on Small Firm's Trademark Rights

Jim MacLeod, president and chief executive officer of a broadcasting representation group in Canada named BBM Canada recalls the moment of his disturbing discovery.  He was travelling on business in New York City in 2010, when he flung open the curtains of his hotel room and observed a glaring billboard advertising RIM's new BBM -- BlackBerry Messenger service.

Impossible, he thought.  After all, BBM had been around for six decades and was a well known name among the Canadian communications market.  Was it really possible RIM had just scooped up his firm's name without authorization?

Rim BBM ad
BBM Canada's CEO reportedly learned about RIM's infringement after observing one of its billboards advertising the service.  Allegedly RIM refused to negotiate with BBM, who had used the trademark name for six decades. [Image Source: Flickr]

Well it turns out that RIM appears to have known about the conflict.  In 2010 when it applied for the trademark, the Canadian Intellectual Property Office sent it a complaint letter warning that the name "was not registerable."

But RIM defied logic and decided to use the trademarked acryonym anyways.

It began to market its service under the BlackBerry Messenger name, using the BBM for a shorthand.  Today that service is a key selling point for many of RIM's 50 million customers, as its unified messaging allows customers to drop pricey text-messaging plan add-ons and message with the protection of secure encryption.

BBM -- the company -- had a rich history.  It was founded in 1944 as the Bureau of Broadcast Management to help network and advocate for television broadcasters and advertisers.  It later changed its name BBM Bureau of Measurement and then BBM Canada.  Today it holds and actively operates out of the domain name bbm.ca, uses "BBM" in its logo, and operates employee email from a bbm.ca address.

If Mr. McLeod's claims are to be believed, RIM not only was grossly negligent in failing to clarify the ownership of the term BBM; it was outright arrogant, hoping to trample the smaller firms intellectual property rights.  Mr. McLeod recalls that he reached out to RIM, offering to rebrand his company if RIM was willing to cover the costs -- a pretty incredible gesture given the firm's six decades of using the name.  RIM refused.  And Mr. McLeod says he reached out to BlackBerry requesting a meeting with an executive.  Again, RIM allegedly met his request with a cold rejection.

II. BBM to RIM: "No more Mr. Nice Guy"

Now those moves may come back to haunt RIM.

No longer looking to make peace, the scorned BBM Canada filed a lawsuit against RIM back in Aug. 2010.  It is seeking an injunction to prevent RIM and its employees from using the trademark, and is also seeking monetary compensation for the abusive -- infringement and punitive damages.

Mr. McLeod says its imperative for the court to make an example of RIM and show that big companies can't just trample the rights of smaller businesses and steal their trademarks.  He states, "We don’t want to pile on the troubles of RIM – this predates RIM’s troubles – but from our point of view, this is a very serious situation.  If the big guy who can throw the most money at it can take your trademark, why do you even have trademark law?"

Again -- as with most of RIM's recent troubles -- the source of trademark mess allegedly comes from incompetent management of RIM's upper executive echelon.  Canada's The Globe and Mail reports sources as saying that RIM's legal department gave warnings to the managers about the naming conflicts, but that high level parties chose to ignore that warning. 

RIM co-CEO Jim Balsillie
RIM's legal staff tried to warn it about the recent trademark conflicts, reportedly, but the executives refused to listen (co-CEO Jim Balsillie pictured). [Image Source: Reuters]

It's hard to measure exactly how much business may be lost if RIM is forced into another costly renaming, but it's clearly the last thing a company who has seen sliding profits, subscriber numbers, and cash reserves needs.  If nothing else, a renaming would be ablow to consumer confidence in the brand, creating confusion and frustration.

And the most troubling thing is that if Mr. McLeod is being honest in his commentary, this was all utterly avoidable.  There's two sides to every story, but it's hard to escape the fact that it sounds like RIM's upper management was grossly arrogant and negligent here.

It's incidents like these that reminds one of the recent "Open Letter" published by a departing "high ranking employee", who wrote complaining of the company's poor management, commenting, "I have lost confidence. While I hide it at work, my passion has been sapped. I know I am not alone..."

III. RIM Employees Start Drunken Airline Brawl; RIM Employees in Indonesia Arrested for Provoking a Riot

Piling on the bad news for RIM, two employees recently created a public controversy when they engaged in physical combat with airline employees, forcing a flight to be diverted.  The inebriated business travellers -- George Campbell, 45, of Conestogo, Ont., and Paul Alexander Wilson, 38, of Kitchener, Ont. -- were handcuffed to their seats and the flight to Beijing was diverted to Vancouver, so the men could be arrested.

Blame it on the alcohol
RIM employees channel Jamie Foxx: "Blame it on the goose, gotcha feeling loose; Blame it on the 'tron, catch me in a zone; Blame it on the a-a-alcohol." [Image Source: Globe and Mail]

The pair plead guilt to mischief, and were sentenced to $72,000 USD each in restitution and a year of probation.  

An embarassed RIM stated, "RIM expects that its employees conduct themselves in a manner reflective of our strong principles and standards of business behavior.  RIM does not condone behavior that conflicts with applicable laws and employees are expected to act, at all times, with integrity and respect. The individuals involved in this incident are no longer employed by RIM."

Several RIM employees are also facing charges in Jakarta, Indonesia, including Canadian Andrew Cobham.  They decided to offer a 50 percent off discount to the first 1,000 purchasers of the BlackBerry Bold 9790 at its Nov. 25 debut.  The result was a stampeding riot, which left dozens injured, with several people fainting.

The Canadians could spend up to nine months in Indonesian prison for committing "negligence leading to injury".  RIM appologizes for the mayhem and injury it created commenting, "RIM is actively co-operating with the authorities who are investigating this incident.  We are also undertaking our own investigation to prevent any recurrence of this sort of situation."

In other recent news market research reports indicate that RIM's U.S. market share has plunged from 50 percent in 2006 to 8 percent at last count.  Meanwhile RIM announced it was delaying its next generation BB 10 product (formerly known as BBX) half a year.

Sources: The Globe and Mail [1], [2]



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I just don't see it
By CZroe on 12/24/2011 1:52:41 AM , Rating: 2
It doesn't look like RIM used it as anything more than an abbreviation, which does not infringe on the trademark. The offer to change the name was obviously an attempt at a huge payday. Why would you pay for the costs for another company to change names just so that you can abbreviate something you are within your rights to abbreviate? Ludicrous.

This whole article looks like it was written by BBM Canada and then reposted by DailyTech on their behalf except for usual littany of typos usually seen in DT articles (please have at least one other person read each submission first!).




RE: I just don't see it
By TheRealArdrid on 12/24/2011 3:37:41 AM , Rating: 2
Agreed, assuming RIM didn't attempt to trademark BBM itself. It would make sense, and be wholly permissible, if they trademarked 'BlackBerry Messenger' and then simply used 'BBM' as shorthand. Under that scenario, BBM Canada would likely be very unsuccessful.

However, if RIM did in fact use BBM as a full-fledged trademark, and not simply as an abbreviation, despite warnings from the trademark office and their own legal staff, then I think BBM Canada has a very good case for willful infringement and trademark dilution.


RE: I just don't see it
By Just Tom on 12/24/2011 9:20:47 AM , Rating: 2
So if Verizon has a service that allows an user to text and talk at the same time and calls it Allows Text and Talk, using the abbreviation AT&T things would be kosher?


RE: I just don't see it
By Cheesew1z69 on 12/24/2011 9:32:23 AM , Rating: 4
READ....

quote:
Well it turns out that RIM appears to have known about the conflict. In 2010 when it applied for the trademark, the Canadian Intellectual Property Office sent it a complaint letter warning that the name "was not registerable."


RE: I just don't see it
By CZroe on 12/25/2011 1:04:17 AM , Rating: 1
I *DID* read. They didn't get the trademark so they used the abbreviation without trademarking it. So what? It seems that both you and the writer of this article fancy yourselves lawyers and don't even know how things work. You can trademark an abbreviation but an abbreviation does not violate a trademark even if you use it as you would have regardless. Getting a trademark approved is not authorization to use it, it's getting authorization to police it and prevent others from using it in the same context. RIM didn't get that so that means they can only use it as an abbreviation and can't stop Apple if they decided to call iMessage "BBM" for "Backend Bulletin Messaging" or something.


RE: I just don't see it
By Cheesew1z69 on 12/27/2011 12:44:19 PM , Rating: 2
I fancy myself as a lawyer? No, I don't. I am going by what is in the article, just like everyone else.

quote:
BBM -- the company -- had a rich history. It was founded in 1944 as the Bureau of Broadcast Management to help network and advocate for television broadcasters and advertisers. It later changed its name BBM Bureau of Measurement and then BBM Canada. Today it holds and actively operates out of the domain name bbm.ca, uses "BBM" in its logo, and operates employee email from a bbm.ca address.


Seems pretty cut and dry to me.


RE: I just don't see it
By CZroe on 12/28/2011 1:41:21 PM , Rating: 3
Pretty cut and dry to me too. How can it be that we have different opinions even though we read the same material and both agree that the conclusion should be "cut and dry" obvious? Because one of us is making a huge PRIOR assumption!

It's clear to me that you don'e even realise that something being trademarked and used elsewhere DOES NOT prevent it from being used, and indeed, trademarked somewhere else by someone else. Yes: Often, the same name can be trademarked twice by two unrelated entities as long as they remain in two distinctly different markets and can't be confused. It's what Apple Computer wasn't a problem until they entered the music industry and famously feuded with Apple Corp (media corp/music label founded by The Beatles). It's also why I see ESTES trucks on the road that have nothing to do with Estes model rockets. There are endless examples of this.


LOL
By Cheesew1z69 on 12/23/11, Rating: 0
RE: LOL
By V-Money on 12/23/2011 6:28:12 PM , Rating: 4
Every time I read a story like this I wonder how I can get into an executive position in one of these companies.


RE: LOL
By brundall on 12/23/2011 7:17:01 PM , Rating: 5
Are you saying you would like a 'Rim job'?


RE: LOL
By V-Money on 12/24/2011 1:05:38 PM , Rating: 2
If that's included as part of the incentive package, I'm definitely submitting some resumes.


RE: LOL
By retrospooty on 12/24/2011 7:13:27 AM , Rating: 3
I dunno... Maybe Pirks is right, Jason only reports the negative news on RIM and ignore the poritive... RIM's stock went up 12% the other day, climbing back up to 1/11th of its previous value...... Oh , wait. It was on takover talks from Microsoft, Nokia and Amazon.com LOL

http://www.fool.com/investing/general/2011/12/21/r...


Ridiculous..
By nocturne_81 on 12/24/2011 4:01:37 AM , Rating: 1
So if I create a company named "New Bodacious Company", and unfortunately referred to it as 'NBC' in an ad, would NBC be allowed to sue me into nothingness..? I honestly don't see how any anagram can be considered a trademark. It's one thing if I created a media company that would be a direct competitor, but lacking an overlapping market I don't see any relevance.

If this had been the realm of though 15 years ago, Apple would now be named.. I was going to say Macintosh.. but there's the audio company.. Can't be Apple, because of the Beatles production company.. Hell, if this was the realm of thought then, Apple wouldn't be here.

Or, if I create an awesome new product, and offer it at a discount.. and customers riot at a supplier's store because it's just that awesome.. I'm supposed to be responsible? Personally, I would consider it the fault of the retail outlets for inadequately managing the promotion.

And the airplane incident.. so what?! They may have been travelling on company business, but they weren't on the clock. Not being any sort of high-level executives, I just don't see how it is relevant to RIM. Hell, if my employer was responsible for everything stupid I did while drinking on my own time..




RE: Ridiculous..
By Just Tom on 12/24/2011 9:28:39 AM , Rating: 2
There have been several trademark infringement cases between Apple, Inc. the computer company and Apple, Corps the music label. Apple Corps has won several of those lawsuits.


RE: Ridiculous..
By nocturne_81 on 12/24/2011 4:42:32 PM , Rating: 2
Sure, the Chime/SoSuMi sound lawsuit was in Apple Corps favor (though admittedly ridiculous from where we stand now), but the only lawsuit that ended up mattering was the iTunes case which Apple pretty much won hands down, overturning the previous rulings that allowed Apple Inc to use the trademark as long as they didn't get into the music business..


RE: Ridiculous..
By JHBoricua on 12/30/2011 11:23:33 AM , Rating: 2
I wouldn't say they won hands down. You forgot the part were Apple paid Apple Corps $500 million to avoid going through an appeal of that initial ruling. As a matter of fact, Apple has had to settle all their disputes with Apple Corp, with the later being paid millions every single time.


RE: Ridiculous..
By Cheesew1z69 on 12/24/2011 9:36:22 AM , Rating: 2
quote:
They may have been travelling on company business, but they weren't on the clock.
If you are flying on business, you are representing the company. I know when I fly for training to Texas, I am most certainly "on the clock" and getting paid for it.


RE: Ridiculous..
By Camikazi on 12/24/2011 10:32:58 AM , Rating: 2
When you are traveling for business reasons you are very much on the clock, those people do not do that and not get paid. The fact that they do get paid while traveling means they are on the clock and do represent the company.


RE: Ridiculous..
By jvillaro on 12/24/2011 11:31:37 PM , Rating: 1
With something like BBM is not that easy to upps just a coincidence. They were told and they new it was taken, they offered them a great deal and they just didn't care. so fuck RIM.

By what your saying I should be able to create a company and name it something so I could use the acronym ADIDAS... and they should just let me be. I can't that's a trademark that's worth millions


They were just following another famous example
By Fritzr on 12/23/2011 10:16:31 PM , Rating: 3
http://en.wikipedia.org/wiki/Budweiser
quote:
For the American lager, see Budweiser (Anheuser-Busch). For the Czech lager, see Budweiser Budvar.

Budweiser is a German adjective describing something or someone from the city of Ceské Budejovice (German: Budweis) in Southern Bohemia, Czech Republic.

Beer brewing in Ceské Budejovice (or Budweis) dates back to the 13th century.[1] A few hundred years later, two breweries were founded in the city that made beer which they called "Budweiser," both being beers from the city of Ceské Budejovice (Budweis), Czech Republic. In 1876, the US brewer Anheuser-Busch began making a beer which it also called "Budweiser." This led in 1907 to the "Budweiser trademark dispute" between beer companies claiming trademarks rights[2] to the name "Budweiser."

The three companies are:
Budweiser Bier Bürgerbräu, founded 1795 by German-speaking citizens of Ceské Budejovice, which began exporting Budweiser Bier to the US in 1875. The company was expropriated by the state in 1945, when they changed the name of the company. However, the company reacquired the old naming rights in the 1990s after the fall of communism in Czechoslovakia.
Budweiser (Anheuser-Busch), made by Anheuser-Busch in the United States, was first marketed in 1876 as "Budweiser" in the United States and Canada
Budweiser Budvar, a brewery founded in 1895 by Czech-speaking citizens of Ceské Budejovice


The Anheuser Busch product is a fake Budveiser beer :P




By nocturne_81 on 12/24/2011 4:03:39 AM , Rating: 2
And Jack Daniels is not whiskey!


By Fritzr on 12/25/2011 12:01:51 AM , Rating: 2
Jack Daniels is Whiskey ... it is NOT Scotch and it is NOT Irish Whiskey.

Bourbon, Scotch and Irish Whiskey are all Whiskeys. Bourbon is not produced in Scotland, Scotch is not produced in Ireland and no one in the United States makes an Irish Whiskey.

Jack Daniels is none of the above though. It is a Tennessee Whiskey :D
(http://www.jackdaniels.com/age.aspx?ReturnUrl=%2ff...

A similar case that has been won is Champagne made from grapes that have never been near France, let alone grown in Champagne. After the dust settled it is now agreed that Champagne is a sparkling wine bottled in the Champagne district of France. Similar wines bottled anywhere else in the world are Sparkling Wine.


Hmm?
By name99 on 12/25/2011 1:08:34 AM , Rating: 2
quote:
it was outright arrogant, hoping to trample the smaller firms intellectual property rights.


So NOW Jason suddenly cares about property rights?
The difference between this and Samsung vs Apple is what exactly? Explain to me how MORALLY it is different; apart of course from the fact that Samsung were a lot more aware of what they were doing.




RE: Hmm?
By tamalero on 12/26/2011 5:19:29 AM , Rating: 2
easy to answer.

unlike other companies, Apple is champion in trademarking and /or patent incredibly generic and common words, actions or things.
which makes you scratch your head why the trademark or patent office agreed in the first place.

next apple is gonna trademark dreams and breathing, thus we will be have to pay them or we could just.. you know.. stop dreaming and breathing.


RE: Hmm?
By name99 on 12/26/2011 6:00:33 PM , Rating: 2
Here's a list of Apple trademarks:
http://www.apple.com/legal/trademark/appletmlist.h...

Here's a list of Microsoft trademarks:
http://www.microsoft.com/about/legal/en/us/Intelle...

Here's a list of Google trademarks:
http://www.google.com/permissions/guidelines.html

I see no material difference between the three. All contain a mix of common ("real") words and made-up words.

As for design patents (which I assume is what you mean by randomly venting about "obvious Apple patents") you do know that Google, for example, holds a design patent for their front page: http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PT...

And you can be damn sure that if MS (or Apple, or Samsung, or anyone else) created a search engine that copied what Google considers to be the material elements of that design patent, they'd be answering to Google's lawyers.


Seriously?
By tamalero on 12/26/2011 5:16:39 AM , Rating: 2
I have no idea what is wrong with RIM these days, but its like they are doing their best to sink their name/company.
shooting their foots again and again...

Almost as bad as the older HP guys.. trying to sell their core business? I mean.. common!!




Did RIM kick any puppies or drown some kittens too?
By Lord 666 on 12/23/11, Rating: -1
By V-Money on 12/24/2011 1:12:07 PM , Rating: 2
I'm kind of still wondering what the problem is, if you read any of Mick's articles he typically recaps previous articles at the end as kind of a summary of the situation. I don't really see how that's pathetic, and since you aren't required by any laws (that I know of) to read his articles, it kind of seems like pointless bickering.


By Cheesew1z69 on 12/24/2011 1:15:27 PM , Rating: 2
Yep, they were representing the company on business time, they started fights with people and got arrested after getting hammered. I fail to see why this shouldn't be mentioned as it looks bad on the company and something they surely don't need right now.


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