Date:
20121116
Docket:
A-308-12
Citation: 2012
FCA 292
Present: NOËL J.A.
BETWEEN:
BBM
CANADA
Appellant
and
RESEARCH
IN MOTION LIMITED
Respondent
Dealt with in writing without
appearance of parties.
Order
delivered at Ottawa, Ontario, on November 16, 2012.
REASONS
FOR ORDER BY: NOËL
J.A.
Date:
20121116
Docket:
A-308-12
Citation: 2012 FCA 292
Present: NOËL
J.A.
BETWEEN:
BBM CANADA
Appellant
and
RESEARCH
IN MOTION LIMITED
Respondent
REASONS
FOR ORDER
NOËL
J.A.
[1]
BBM
Canada (the appellant), together with its subsidiaries is the sole supplier of
impartial radio and television ratings data in Canada. It owns the registered
trade-mark TMA701,839 “BBM”.
[2]
The
appellant brought an application against Research in Motion Limited (the
respondent) alleging trade-mark infringement arising from the respondent’s
rebranding of its BlackBerry Messenger service as “BBM”. The application was
dismissed by Near J. and the present appeal ensued.
[3]
In
dismissing the appellant’s application, Near J. held among other things that
the respondent’s use of “BBM” was not likely to cause confusion with the
appellant’s registered trade-mark because each operated in distinct markets with
no overlap (reasons at paras. 44 to 55).
[4]
The
appellant now brings a motion to present new evidence pursuant to Rule 351 of
the Federal Courts Rules, SOR/98-106. This new evidence would reveal
that after the decision under appeal was released, the respondent submitted a
suggestion to the Collins dictionary for inclusion of “BBM” as a new
word in its dictionary to be defined as meaning the respondent’s BlackBerry
Messenger application. Collins dictionary adopted the proposed
definition and subsequently the respondent posted a video celebrating the
addition of “BBM” to the Collins dictionary on its official BlackBerry
blog page. It also posted a copy of the video on YouTube®.
[5]
In
order to obtain leave to file new evidence on appeal, the requesting party must
demonstrates that the evidence in question was not available at the time of the
hearing, is credible and is practically conclusive of an issue on appeal (The
Queen v. General Electric Capital Canada Inc., 2010 FCA 290 at para. 3; Shire
Canada Inc. v. Apotex Inc., 2011 FCA 10 at paras. 17 and 18).
[6]
Only
the last element of this test is in issue. The argument raised by the appellant
boils down to this. The addition of “BBM” to the Collins dictionary at
the instigation of the respondent reveals that the respondent has the desire
and the means to give its trade-mark an acceptation which excludes all others,
thereby undermining Near J.’s conclusion that the two marks can co-exist in
their respective distinct universe.
[7]
In
my respectful view, the appellant has not succeeded in establishing that its
proposed new evidence would practically be dispositive of an issue on appeal.
[8]
The
record reveals that Near J. had before him extensive evidence to the effect
that the respondent has a capacity to build brand recognition which the
appellant cannot hope to match (Affidavit of James MacLeod, para. 14, appeal
book, pp. 61 and 62). The evidence establishing this imbalance is compelling
and is already referred to in the appellant’s memorandum of fact and law filed in
support of its appeal.
[9]
What
the appellant seeks to do is to bring into the record additional evidence
pointing in the same direction. This falls short of the high threshold which
the third element of the test commands.
[10]
The
motion will accordingly be dismissed, with costs.
“Marc
Noël”
FEDERAL COURT OF
APPEAL
NAMES OF COUNSEL AND
SOLICITORS OF RECORD
DOCKET: A-308-12
STYLE OF CAUSE: BBM
CANADA and RESEARCH IN MOTION LIMITED
MOTION
DEALT WITH IN WRITING WITHOUT APPEARANCE OF PARTIES
REASONS FOR ORDER BY: Noël J.A.
DATED: November 16, 2012
WRITTEN
REPRESENTATIONS BY:
|
Peter E.J. Wells
Joanna
Vatavu
|
FOR
THE APPELLANT
|
|
L.E. Trent Horne
Dominique
Hussey
|
FOR
THE RESPONDENT
|
SOLICITORS
OF RECORD:
|
MCMILLAN LLP
Toronto, Ontario
|
FOR
THE APPELLANT
|
|
BENNETT JONES LLP
Toronto, Ontario
|
FOR
THE RESPONDENT
|
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