The Applicant submits that it selected the Trade Mark to reflect the Applicant's unique identity and positioning in the market which is distinct from the Opponent's social networking services. Sharma argues that:
- that the word REEL is a generic way of describing a film or movie shown in a cinema and that this term has been used for many decades as a descriptive term;[21] and
- the respective trade marks look and sound different and are unlikely to be confused on that basis and that the Applicant is unaware of any confusion taking place between the respective trade marks. [22]
In regards to the Applicant's first point, it is my view the word REEL contains an indirect reference to an old-fashioned movie reel shown in a cinema, however, that concept has no inherent application in the context of the online social networking products and services that are of interest to the Applicant and Opponent. Therefore, it cannot be said that the words REEL or REELS are descriptive of the character or quality of such goods or services. I am satisfied that the expression REEL does not have a generic or descriptive meaning when applied to the goods and services of interest to the parties.
In considering the Applicant's second point, I turn to the Opponent's submissions. The Opponent has argued that a similarity of idea, impression and language would give rise to a real risk that Australian social media users[23] might have cause to wonder that the Trade Mark used on the Applicant's Goods and Services was somehow related to the Opponent's Mark and the Opponent's Goods and Services. The Opponent states:

I agree with the Opponent. In considering the respective trade marks, the word REEL is the prominent and striking first element of the Trade Mark and it is the whole of the Opponent's Mark. It is my view, the addition of the word STAR to the Trade Mark will be regarded as a descriptive qualifier to the distinctive term REEL. I consider that Australian consumers who see the Trade Mark are likely to focus on the striking term REEL and, given the reputation of the Opponent's Mark, regard goods and services offered under the Trade Mark as a new product offering, sub-brand or brand extension of the Opponent's Mark. That connection is reinforced by the way in which the Trade Mark reproduces the Opponent's Mark in its entirety at the start of the mark, as well as by the concept conveyed by the Trade Mark, which is of someone or something which features in and is a 'star' of a short form video on social media. Additionally, the likelihood of confusion is again reinforced by the fact that the Trade Mark is sought to be registered in respect of the very goods and services for which the Opponent and the Opponent's Mark have a demonstrated reputation.
As already discussed above in paragraph 17 of my decision, there is no requirement that the Trade Mark be used in respect of similar goods or services in order for the ground of opposition under s 60 to be engaged. However, it is well-established that the likelihood of deception or confusion will be increased where, as here, the goods and services in respect of which registration is sought are goods or services the Opponent is known to have a connection with.[24]
Overall, I consider that, given the substantial reputation acquired by the Opponent's Mark along with the similarities between the respective trade marks, a significant number of Australian social media users would at the very least experience a reasonable doubt[25] as to the existence of some sort of connection between the Opponent's Mark and the Trade Mark if it were used on the Applicant's Goods and Services.
The Opponent has accordingly established its ground of opposition under s 60.

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

I find that the Opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly, I refuse to register trade mark application no. 2381761.

The Opponent has requested its costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) ('Southern Cross'), see also s 29(1) Trade Marks Act 1995 (Cth).

[4] [2023] FCA 487, [20]-[21] (Kennett J).

[5] [2000] FCA 1335 ('McCormick').

[8] [1999] ATMO 23; (1999) 47 IPR 423, 436 (Hearing Officer Thompson).

[10] Ibid [91] (emphasis in original). Justice Heerey's decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[11] 'REELS' is registered in a number of countries as demonstrated in Exhibit SM-9 accompanying Minden.

[12] Exhibits CH-1 and CH-3 accompanying Hrvoj and Exhibits SM-1, SM-2, SM-6 and SM-7 accompanying Minden.

[19] I note that the sample size for the survey was over 1500 users.

[20] Seven Up Co v OT Ltd [1947] HCA 59; (1947) 75 CLR 203, 211 (Williams J).

[23] In the present case, the relevant market comprises a significant proportion of the Australian population being social media users.

[24] Shachihata Industrial Co Ltd v Magic Market Corp (1984) 3 IPR 519 (Senior Assistant Registrar Hanlon); Aussie Home Loans Ltd v Aussie Loans Pty Ltd [2006] ATMO 75 [34] (Hearing Officer Thompson).

Mark Regulations 1995

Meta Platforms, Inc. v Reel Star Pty Ltd [2025] ATMO 224 (31 October 2025)

The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc  [2012] FCA 81;  201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards  [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4)  [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company  [2019] FCA 923 (Rodney Jane Racing) at [87] (O'Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is "likely" to be deceptive or cause confusion.[4]

Meta Platforms, Inc. v Reel Star Pty Ltd [2025] ATMO 224

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Judgment (22 paragraphs)

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Legislation Cited (3)

Cases Cited (6)

Meta Platforms, Inc. v Reel Star Pty Ltd [2025] ATMO 224 (31 October 2025)