The BlackBerry maker can’t get a break these days. On December 6th, an American company obtained a Temporary Restraining Order, from a US court barring RIM from using the mark BBX in association with software. The lawsuit is based on the registered trade-mark BBX owned by BASIS International Ltd. This has caused an embarassing renaming of RIM’s new operating system to BlackBerry 10.

Lessons for business?

• Trade-mark screening searches are critical when launching a new brand. Searches can be conducted country-by-country, and search services can screen top markets with quick “knock-out” searches to quickly determine availability.
• Sure, RIM has been beat up a bit by the markets recently, but it’s still a global titan in the mobile devices and software industry… but that didn’t stop a rival software maker from taking on a trade-mark fight. That’s because BASIS had registered trade-marks in its arsenal.  Without the benefit of a trade-mark registration, this fight would have been much more costly and time-consuming and the outcome would have been much different.
• Think about timing and territory – in this case, the preliminary injunction was rushed to court because of the BlackBerry Developer’s Conference in Asia on December 7 and 8, where the BBX mark would have been used extensively by RIM. Does a US court have jurisdiction to issue an order to a Canadian company regarding the use of its mark in Singapore? You might think the answer is no, but an American judge will have a different view. Faced with the US order, RIM decided to re-brand. 

Calgary – 07:00 MST