Opposition by IMDb.com Inc to extension of protection under regulation 17A.33 of the
[2025] ATMO 120
•20 June 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by IMDb.com Inc to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 2343950 (International Registration number 1720647) (class 9) - DMDb - in the name of Zumedia Inc
Delegate: | Tracey Berger |
Representation: | Opponent: Frances St John of Counsel instructed by King & Wood Mallesons Holder: David Larish of Counsel instructed by McCullough Robertson Lawyers |
Decision: | 2025 ATMO 120 Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – s 60 of the Trade Marks Act 1995 (Cth) established – extension of protection refused |
Background
This decision concerns an opposition by iMDb.com Inc (‘Opponent’) under reg 17A.33 of the Trade Mark Regulations 1995 (Cth)[1] to the extension of protection of the following International Registration Designating Australia (‘IRDA’):
[1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
| Trade Mark Number | 2343950 (‘IRDA’) |
| International Registration Number | 1720647 |
| Trade Mark | DMDb (‘Trade Mark’) |
| Holder | Zumedia Inc (‘Holder’) |
| Priority Date | 21 February 2023 (‘Relevant Date’) |
| Goods/Services | Class 9: Computer application software for mobile devices for use in providing users with access to searchable databases; software for creating searchable databases; software for wireless content delivery; downloadable software featuring an entertainment database for use on computers and mobile devices; software for accessing information on the Internet or other computer or communications network; software for transmitting, receiving, downloading, streaming, and displaying content, text, visual works, audiovisual works, data, files and electronic works via the Internet or other computer or communications network; software for formatting and converting content, text, visual works, audiovisual works, data, files and electronic works into a format compatible with portable electronic devices and computers; software enabling content, text, visual works, audiovisual works, data, files and electronic works to be downloaded to and accessed on a computer or other portable consumer electronic device. (‘Holder’s Goods’) |
Following the advertisement of acceptance of the IRDA for possible extension of protection, the Opponent filed a Notice of Intention to Oppose the registration on 21 September 2023, followed by a Statement of Grounds and Particulars (‘SGP’) on 20 October 2023 (subsequently amended). The Holder filed a Notice of Intention to Defend on 1 December 2023.
The parties then proceeded to file evidence in accordance with the Regulations. The Opponent filed evidence in support on 4 March 2024, followed by the Holder’s evidence in answer on 10 June 2024 and concluding with the Opponent’s evidence in reply on 13 August 2024.
Once the time for filing evidence had ended, the parties were able to request a hearing. Both parties ultimately requested an oral hearing. Prior to the hearing, the parties filed a written summary of their submissions. I heard this matter as a delegate of the Registrar of Trade Marks on 24 April 2025. At the hearing, Frances St John of Counsel, instructed by Cate Nagy and Vineetha Veerakumar of King & Wo24od Mallesons, appeared for the Opponent. David Larish of Counsel, instructed by McCullough Robertson Lawyers, made oral submissions for the Holder. I make my decision based on the aforementioned materials and submissions of the parties.
Grounds, onus and Relevant Date
The Opponent’s SGP nominates grounds of opposition under ss 42(b), 44, 58, 60 and 62A. The s 58 ground of opposition was not pressed at the hearing and I treat this ground as abandoned.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard on the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
and Edelman JJ).
The rights of the parties are to be determined at the Relevant Date being both the priority date and the filing date of the IRDA.
Evidence
The following evidence was filed in the proceedings:
| Declarant and Position | Date | Exhibits/Annexures |
| EIS | ||
| Dana Northcott, Vice President and Associate General Counsel of the Opponent (‘Northcott’) | 1 March 2024 | Tabs 1 to 21 of DN-1 |
| EIA | ||
| Phyllis Jager, Chief Executive Officer of the Holder (‘Jager’) | 7 June 2024 | 1 to 13 |
| EIR | ||
| Kelly Louise Williamson, attorney at King & Wood Mallesons (‘Williamson’) | 13 August 2024 | KW-01 to KW-03 |
Opponent’s evidence in support
According to Northcott, the Opponent has been operating the website (‘Opponent’s Website’) in connection with the IMDb trade mark since 1996, which site hosts the world’s most popular and authoritative database for movie, TV show, and celebrity information (‘Opponent’s Database’). An article in The Age in 2000 refers to the Opponent’s Website at among the top 20 websites of all time.
The Opponent's Database is searchable and includes details on films from the late 1800s to the present as well as television shows, podcasts, video games, cast and crew members, quotes, trivia, critic and user reviews, ratings and rankings, plot summaries, box office data, showtimes and ticketing, celebrity biographies, entertainment news, photographs, film festival coverage, major event coverage, and trailers. Northcott details the growth of the Opponent, its acquisition by Amazon in 1998 and exhibits various articles and website extracts about the Opponent’s history, popularity and content.
Northcott exhibits evidence that the Opponent’s Database is directed to Australian consumers providing information such as showtimes for films screening in Australia and a calendar of upcoming movie and television releases. Screenshots of the Opponent’s Website from March 2014 to February 2024 are also provided. Australians can register for an account to receive personalised recommendations, create watchlists of entertainment, rate content and contribute information to the Opponent’s Database which is verified by the Opponent’s editors.
The Opponent has an official IMDb Community forum where users can get support and answers to questions from the Opponent’s customer service team and other IMDb members. Examples of Australian specific content from this forum between 1 September 2015 and 5February 2024 are provided in Northcott.
The Opponent publishes various content on the Opponent’s Website including:
IMDb Originals: online video series covering movies, television, awards shows, holidays and other events;
IMDb Picks: written and video lists of recommended and upcoming movies, television shows and related content;
IMDb Spotlight: amplified stories from a diverse range of storytellers, creators, and talent focussing on heritage and identity celebrations such as Black history, Women’s history, Asian heritage, etc;
iMDb Podcasts: a section dedicated to podcasts including original podcasts such as ‘IMDb Movies that Changed My Life’; and
IMDb Developer: provides IMDb’s data for licencing.
The Opponent offers several other services including:
IMDbPro: a subscription membership service for people working in the entertainment industry which provides subscribers with access to features including IMDbPro Track, which sends notifications when people or titles they track are in the news or are updated; IMDbPro Discover, which is an advanced search tool; and IMDbPro Jobs, which is a casting service;
a box office reporting and analysis service named ‘Box Office Mojo by IMDbPro’ which tracks box office receipts globally including Australian box office data for almost every year since 2000; and
mobile phone application versions of the Opponent’s Website named IMDb app and IMDbPro app, both of which have received various accolades and publicity in major Australian publications including the Sydney Morning Herald.
Northcott provides details of the Opponent’s followers on social media and exhibits a list of over 700 Australian news articles referring to IMDb between 4 August 2000 and 31 January 2024. By May 2023, shortly after the Relevant Date, the Opponent’s Website was receiving 200 million monthly visitors, nearly 1 million data contributions weekly and had over 1 billion user ratings.[4]
[4] Northcott, p 74.
I note from the evidence that the Opponent’s primary mark is principally used in the forms imdb.com, IMDb and (‘Opponent’s Logo’).
Northcott notes that the Opponent owns the following Australian trade mark registrations (‘Opponent’s Registrations’):
| Number | Trade Mark | Priority Date | Classes |
| 1015780[5] | IMDB | 13 August 2004 | 35, 38, 41 & 42 |
| 1346381[6] | IMDB | 26 January 2010 | 9 |
| 2145926 | IMDBPRO | 28 December 2020 | 35, 41, 42 & 45 |
| 2231527 | IMDB IS OBSESSED | 21 October 2021 | 9, 38 & 41 |
[5] This registration is subject to an endorsement that ‘Provisions of subsection 41(5) applied’.
[6] This registration is subject to an endorsement that ‘Provisions of subsection 41(5) applied’.
Holder’s evidence in answer
Jager attests that the Holder launched its digital media database and social media online platform under the Trade Mark in February 2023 at (‘Holder’s Platform’). According to Jager, the Holder’s Platform features:
(a) a unique social media platform, on which members can, amongst other things, display artwork, livestream events, host watch parties, broadcast videos, and email and direct message each other; and
(b) an online digital media database, which provides users with information concerning the creators, developers, producers, cast, and/or crew of a vast array of digital media content including, without limitation, movies, television shows, commercials (videos), advertisements, games, feuds, live streams, viral videos, software applications, people, non-fungible tokens (NFTs), songs, graphics interchange formats (GIFs), websites, music videos, podcasts, e-books, sounds effects, sound bites, audio books, albums, animation arts, application programming interface (APIs), broadcasts, photography, and memes (‘Holder’s Database’).
Most of the information on the Holder’s Database is contributed by its members being people in the media industry such as filmmakers, producers, directors, actors, set/art/costume designers, agents and fans.
Jager declares that she chose the Trade Mark because she wanted ‘a four-letter dotcom domain name because it is my understanding that such domain names are easy to remember, create brand recognition and are less prone to typos than longer domain names’ and the domain name dmdb.com was available. Jager explains that she then decided DMDb could be an acronym for ‘digital media database’ which also related to the purpose of the Holder’s platform.
According to Jager, ‘Db’ is commonly known as an abbreviation for ‘database’ but the acronym DMDb is invented. In support of these claims, Jager exhibits extracts from The Holder also notes a number of other Australian trade mark registrations for marks containing the letters ‘DB’ covering database-related goods and services as well as examples of marks containing ‘DB’ in use for various databases (‘Third Party Databases’).
Jager attests that the Opponent’s Mark is an acronym for ‘Internet Movie Database’ and exhibits an examination report on registration 1346381 and the Opponent’s response to that report.
Opponent’s evidence in reply
Williamson attests to searches conducted of the Wayback Machine for the Third Party Databases and exhibits copies of historical screenshots of those databases.
Discussion
Section 60
Section 60 provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
To establish this ground of opposition, the Opponent must demonstrate that a reputation has been acquired in another trade mark in Australia at the Relevant Date. If reputation is established in a mark, the Opponent must then prove that because of this reputation, use of the Trade Mark is likely to deceive or cause confusion.
In its SGP, the Opponent claims to have a reputation in the marks which are the subject of the Opponent’s Registrations. At the hearing, the Opponent argued that it has a reputation in the Opponent’s Mark and the Opponent’s Logo. Although the Opponent’s Logo is not specifically mentioned in the SGP, I consider the Opponent’s Logo to be substantially identical to the Opponent’s Mark. Accordingly, in reaching my decision, I have taken into account use of the Opponent’s Mark (including in the form IMDb) and the Opponent’s Logo.
Reputation
Reputation in the context of s 60 means recognition of the other trade mark ‘by the public generally’.[7] The reputation in the other trade mark must be amongst a significant or substantial number of people.[8] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[9] The reputation cannot be assumed and must be established as a matter of fact by the Opponent.[10] In the present case, the relevant market is most of the population from young teenagers to adults with an interest in television, movies, celebrities and entertainment.
[7] McCormick & Company Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[8] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Tamberlin J).
[9] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
[10] ConAgra Inc. v McCain Foods (Aust) Pty Ltd[1992] FCA 159, [75] (Lockhart J).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[11] or providing evidence of high volume of sales,[12] advertising expenditure or other promotion of goods or services to which the trade mark applies.[13] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[14]
[11] Ibid [118].
[12] McCormick (n 7), [86].
[13] Ibid.
[14] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
The Opponent's evidence shows that the Opponent’s Mark has been used extensively for over 25 years before the Relevant Date, both internationally and in Australia, in relation to the provision of entertainment-related information. The Holder accepts that the Opponent has ‘a strong reputation in the Opponent’s Mark in Australia in respect of an online entertainment resource’. I concur that the Opponent's evidence demonstrates a significant reputation among a substantial portion of the Australian public at the Relevant Date, particularly for providing entertainment information through a database.
Likelihood of deception or confusion
The existence of a reputation alone is not sufficient to succeed under s 60, the use of the Trade Mark must be likely to deceive or cause confusion. The likelihood of deception or confusion from the use of the Trade Mark must arise because of the reputation of the Opponent’s Mark.[15]
[15] Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065; (2015) 115 IPR 82, [29] (Jessup J).
The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[16]
[16] [1979] RPC 410, 423 (citation omitted).
The likelihood of deception or confusion must be real and tangible.[17] However, ‘the threshold for confusion is not high’[18] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[19] The relevant comparison is between the Opponent’s Mark and a notional normal and fair use of the Trade Mark in respect of the Holder’s Goods.
[17] Southern CrossRefrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
[18] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[19] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (‘Tivo v Vivo’), [105] (Dodds-Streeton J).
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi, the Registrar’s delegate observed:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[20]
[20] [2012] ATMO 124, [40] (Hearing Officer I. Thompson).
In relation to the similarity of the Holder’s Goods and the Opponent’s Database, the Holder concedes that there is a nexus between the parties’ respective goods and services. On my assessment of the evidence, I agree that the parties have similar offerings. However, the parties disagree on the similarity of the marks and likelihood of confusion resulting from the Opponent’s reputation.
Although there is no requirement for the marks to be deceptively similar, the Opponent argues that this is the case. The Opponent points out the obvious similarities between the Opponent’s Mark and the Trade Mark, noting that they differ only in the first letter and share the suffix '-MDb'. The Opponent contends that because both marks are short, each letter is an essential feature or dominant cognitive cue. Consequently, three of the four essential features of the Opponent's Mark appear in the Trade Mark in the same order, creating a degree of visual and aural similarity. The Opponent references Heerey J’s comments in Australian Associated Motor Insurers Ltd v Australian Automotive Motor Inspection Centre Pty Ltd (‘AAMI’):
It is a common experience that, when one is familiar with a particular word and comes across another which is very similar, one's mind, programmed, so to speak, to recognise the first word, short tracks to a conclusion that the second word is the same. Anyone with experience of proof reading will recognise this phenomenon. So someone familiar with the acronym AAMI and, knowing it represents a motor vehicle insurer, encounters the acronym AAMIC in a context related to the repair of motor vehicles, may well, at a quick glance, not detect the difference. And even if the difference is recognised, such a person may think that the terminating letter "C" does not denote a completely different trader. They might think that AAMI is now operating an inspection centre and that the "C" simply indicates that that centre is AAMI's centre.[21]
[21] [2003] FCA 1088, [22].
Further, the Opponent asserts that even if consumers do not confuse the Trade Mark for the Opponent’s Mark, the similarities between the marks are such that consumers might consider the Holder’s Goods bearing the Trade Mark to be a ‘commercial extension, franchise or sub-brand’ of the Opponent.
The Holder argues that the difference in the first letter of the Trade Mark as compared to the Opponent’s Mark is significant and sufficient to render the marks distinguishable. In this regard, the Holder refers to the decisions in Australian Meat Group Pty Ltd v JBS Australia Pty Ltd,[22] United Parcel Service of America Inc v MPS Hold Co Pty Ltd[23]and various other decisions where two 3 letter acronyms were not found to be confusingly similar. The Holder also notes the finding in FWRD, LLC v Corezero Pty Ltd[24] that FFWD and FRWD were not deceptively similar and disputes the relevance of AAMI where the comparison was between AAMI and AAMIC. In addition, the Holder contends that the present comparison is different to that in the decision of Tivo v Vivo[25] also cited by the Opponent given it involves acronyms as opposed to words.
[22] [2018] FCAFC 207 (Allsop CJ, Besanko and Yates JJ) (‘Australian Meat’).
[23] [2022] ATMO 199 (Hearing Officer T. Brown).
[24] [2025] ATMO 11 (Hearing Officer T. Brown).
[25] (n 19).
The Holder further submits that the marks are visually and aurally distinct, the Australian public is accustomed to distinguishing between similar acronyms[26] and Db is a common acronym for ‘database’ so the first letters are more important. Given the importance of the first letters, the Holder says there is no reason consumers would imperfectly recollect the Trade Mark as the Opponent’s Mark nor would they expect the Opponent to change the first letter for any commercial extension, franchise or sub-brand when it is more likely the Opponent would add a word or letter to the end of the Opponent’s Mark as they have done with IMDbPro.
[26] Australian Meat (n 22), [83].
Moreover, the Holder contends that the strength of the Opponent’s reputation mitigates against confusion given there are differences in the two marks.[27] The Full Court further noted in Killer Queen, LLC v Taylor:
Where the conflicting marks are not deceptively similar, the strong reputation of a well-known mark may enhance the prospect that no consumers are likely to be confused.[28]
[27] Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065 (Jessup J); see also Singtel Optus Pty Limited v Optum Inc [2018] FCA 575, [205] (Davies J) .
[28] [2024] FCAFC 149, [275] (Yates, Burley and Rofe JJ).
In my opinion, there is a high degree of similarity between the Trade Mark and the Opponent’s Mark. Despite the difference in the first letter, the fact that three of the four letters of the Opponent’s Mark appear in the Trade Mark in the same order creates a notable degree of similarity. Whilst I am not persuaded that general consumers will understand, or stop to consider, that the suffix ‘Db’ is intended to mean ‘database’, this may only heighten the risk for confusion. Consumers with an imperfect recollection who are looking for an entertainment database and know that ‘Db’ means database, may be more likely to confuse the marks by only recalling the suffix ‘-MDb”. I agree with the Opponent that consumers are likely to be quickly seeking to access entertainment information without a high degree of care. Other consumers may appreciate that the marks are not the same but assume that they are related offerings of the Opponent.
In terms of the Holder’s argument that the strength of the Opponent’s reputation mitigates against a likelihood of confusion, I consider that these cases are consistent with the proposition that the likelihood of confusion is dependent on balancing the strength of the reputation and similarity of the marks (as well as nexus of the relevant goods/services). In a number of the cases relied on by the Holder, the degree of similarity was low (eg. AUSFACE v FACEBOOK[29], MADUI Mothers Against Driving v MOTHER family of marks[30], and NEAUVIA v NIVEA[31]) and hence given the opponent’s strong reputation, there was not a likelihood of confusion.
[29] Meta Platforms Inc v Mineralogy Pty Ltd [2024] ATMO 25 (Hearing Officer N. Barbey)
[30] Energy Beverages LLC v Charlie Coglitore [2018] ATMO 33(Hearing Officer A. Waters)
[31] Beiersdorf AG v Matex Lab Switzerland SA [2024] ATMO 65 (Hearing Officer R. Wilson).
I am satisfied that taking into account the similarity of the marks, the strength of the reputation in the Opponent’s Mark and the similarity of the goods and services, there is a real likelihood of confusion between use of the Trade Mark as a result of the reputation in the Opponent’s Mark. Accordingly, the s 60 ground of opposition is successful.
Decision
The Opponent has established a ground of opposition under s 60 and therefore I refuse to extend protection to the Trade Mark which is the subject of application 2343950. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the IRDA be in accordance with the court’s direction or order.
The parties sought costs. It is usual for costs to follow the event and I see no reason to depart from that principle. I award costs against the Holder in accordance with s 221 in the amounts set out in Schedule 8 of the Regulations.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
20 June 2026
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