Opposition by IMDb.com Inc to extension of protection under regulation 17A.33 of the

This decision concerns an opposition by IMDb.com Inc. (the Opponent) to the extension of protection of an international trade mark registration designating Australia, held by Zumedia Inc. (the Holder). The Opponent sought to oppose the extension of protection for the trade mark "DMDb" in Class 9, which covers computer application software and downloadable software for entertainment databases. The opposition was brought under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth), with the Opponent filing a Notice of Intention to Oppose and a Statement of Grounds and Particulars. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Opponent had established grounds for opposition under section 60 of the Trade Marks Act 1995 (Cth). This section allows for opposition if another trade mark had acquired a reputation in Australia before the priority date of the registration, and the use of the mark sought to be registered would be likely to deceive or cause confusion due to that reputation. The Opponent also nominated grounds under sections 42(b), 44, 58, and 62A, though the section 58 ground was abandoned during proceedings. The onus was on the Opponent to prove at least one of the nominated grounds on the balance of probabilities, with the relevant date for determining the rights of the parties being the priority date and filing date of the international registration.

The delegate found that the Opponent had established a significant reputation in its mark, "IMDb," and its logo among a substantial portion of the Australian public by the relevant date, particularly in relation to providing entertainment information through a database. The Holder conceded that the Opponent possessed a strong reputation in Australia for an online entertainment resource. Crucially, the delegate determined that the use of the Holder's mark "DMDb" was likely to deceive or cause confusion due to the Opponent's established reputation. This conclusion was based on the principle that "deceived" implies the creation of an incorrect belief, while "confusion" may involve perplexing or mixing up the minds of the public, particularly regarding the source of goods or services. The delegate noted that the threshold for confusion is not high and that the comparison was between the Opponent's mark and a notional normal and fair use of the Holder's mark.

Consequently, the delegate ordered that the extension of protection for the trade mark "DMDb" be refused.