A. INTRODUCTION
Charities and not-for-profits can learn from two recent
trade-mark disputes, both involving Waterloo, Ontario’s Research in Motion Ltd.
(“RIM”), which made headlines over the past couple of months. In cases in
Canada and the United States, the Canadian technology company has found itself
in court over its use of unregistered trade-marks in association with its
products and services. These trade-mark disputes demonstrate the importance of
conducting due diligence before adopting and using any trade-mark, and further
demonstrate the value of registering an organization’s trade-marks at home and
abroad, as explained below. By taking the appropriate legal risk management measures,
charities and not-for-profit organizations can significantly increase their
protection against allegations of infringement, and can reduce the possibility
of becoming involved expensive litigation.
B. THE “BBM” MARK IN CANADA
On January 11, 2012, the non-profit organization Bureau of
Broadcast Measurement Canada (“BBM Canada”) sought injunctive and compensatory
relief from RIM in Canadian Federal Court over RIM’s use of the trade-mark
“BBM” in Canada.
RIM has used the acronym BBM as a trade-mark in
association with its massively popular BlackBerry messenger service, which
launched in 2005. BBM Canada, however, owns the registered trade-mark for “BBM”
in association with services which it argues are similar to the services
offered by RIM. In this regard, BBM Canada has alleged that RIM’s use of “BBM” is causing
confusion in the marketplace. As a result, BBM Canada is now seeking an
injunction to prevent RIM from using the mark “BBM”, plus $15 million in other
damages, including $5 million in punitive damages. RIM has argued that there is no marketplace confusion on the basis that the two
organizations “are in different industries and have never been competitors”. However,
according to BBM Canada its employees have been mistaken for RIM employees and
members of the organization have been called for client support related to the
BlackBerry Messenger service.
RIM brought an unsuccessful motion to have the case
dismissed in December, and the trial was heard by the Federal Court on January
11, 2012. The Court has reserved its decision, which will likely be released in
a matter of months.
C. THE “BBX” MARK IN THE UNITED STATES
In an unrelated United States trade-mark dispute, a
federal judge in New Mexico barred RIM from using the name “BBX” at a
conference to promote its new operating system for mobile devices. The order against RIM was sought by Albuqerqe, New Mexico based software
company Basis International Inc., which owns the registered trade-mark for
“BBX” in the United States in association with computer software. Basis International Inc. has alleged that RIM’s use of the BBX trade-mark in
association with similar wares and services is already causing confusion among
U.S. consumers and erosion of customer goodwill. In the motion ruling issued on
December 6, 2011 the registered trade-mark rights of Basis International Inc. were
upheld, and prevailed over the RIM’s rights in its unregistered trade-mark. Though the order barring RIM from using the trade-mark was only temporary, the decision
has prompted RIM to rebrand its product under the name “BlackBerry 10”, which
it unveiled shortly after the court’s decision was made.
D. THE ADVANTAGES OF TRADE-MARK REGISTRATION
The situations described above are examples of the
potential risks involved for a Canadian organization using an unregistered
trade-mark either in Canada or in another country. Potential consequences in
this regard can include orders for damages and the cost of litigation, in
addition to injunctive orders which may force an organization to rebrand,
losing the valuable goodwill associated with its name and brand.
In most countries, an organization’s trade-marks can be
registered with the government as a means of confirming, acquiring or enhancing
trade-mark rights in that country. In Canada, trade-marks are registered with
the Canadian Intellectual Property Office (“CIPO”). A significant advantage of
registering a trade-mark with CIPO is that registration grants the owner a certificate
confirming the right to exclusive use of the trade-mark throughout Canada in
association with the registered wares and services. In this regard, the
registration would be a complete defense to an action for infringement, such as
in the first case described above.
The owner of an unregistered trade-mark is at risk of
infringing the trade-mark rights of registered trade-mark owners, as well as
owners of other unregistered marks. Infringement occurs when an organization
adopts an identical or similarly confusing trade-mark to that of another
organization. When infringement occurs, a registered owner is in a far more
advantageous position to defend its right to use a trade-mark, or to enforce
its rights against an infringing third party. Only in very limited
circumstances will the rights of an unregistered trade-mark user prevail over
the rights of a registered owner.
When an organization adopts a trade-mark, it is very
important that it conduct the appropriate due diligence in ensuring that its use
will not infringe the rights of other parties. This would include ordering
searches of CIPO’s database for similar or confusing registered marks, as well
as searches of common law sources (such as corporate registries, telephone
directories, trade-journals and other publications) for similar or confusing
unregistered trade-marks being used in the marketplace. If similar or confusing
marks are discovered, then the organization should seek legal counsel to
evaluate the potential risks involved in their use of the mark. The most
effective measure to protect the organization from allegations of infringement
would be to register the trade-mark with CIPO. In addition to confirming the
registered owner’s legal right to use the mark across Canada, trade-mark
registration also offers the following benefits:
· Automatic review by CIPO: Once a trade-mark application
is filed it is entered in the trade-marks database and will be an obstacle to
later-filed applications for similar or confusing trade-marks.
· Publicly listed: The trade-marks database is available
online to any member of the public. This public listing can deter third parties
from adopting or using a similar or confusing trade-mark.
· Enhanced options for trade-mark enforcement: In the event
that a third party adopts a similar or confusing trade-mark, a registered owner
will have statutory actions available to enforce its trade-mark rights which
are not available for owners of unregistered marks.
Acquiring trade-mark rights in one country does not grant
rights in any other country and, as demonstrated by the United States case
discussed above, a Canadian organization can face legal action in a foreign
country for its use of a trade-mark, regardless of whether it has the right to
use the same trade-mark in Canada or in other countries. As such, filing for a
foreign trade-mark registration is a protective measure which charity and
not-for-profit organizations should consider whenever they undertake activities
in another country.
Trade-mark registration offers protection for the key
aspects of an organization’s brand including its name, logos and slogans. The
ability to use trade-marks consistently and effectively is an important means
for developing a strong market presence and adding value and goodwill to the
organization’s brand. Brand recognition allows an organization to build a
reputation, making it a preferred provider of goods or services, or making it a
desired provider in areas in which the organization’s goods and services are
not currently being offered. In this regard, an organization’s brand is a
valuable asset which must be protected.
E. CONCLUSION
It is important for charities and not-for-profits to be
proactive in protecting the key and valuable trade-marks which are integral to their
brand. Trade-mark registration provides enhanced means to enforce trade-mark
rights, and also provides a significant measure of risk protection against infringement
allegations by other trade-mark owners. In this regard, charities and not-for-profits
should consider applying for registration of any unregistered names, slogans or
logos which they are using, or are may soon be using, either in Canada or
abroad.
