Trade mark application number 2461296 (class 33) – - [2025] ATMO 109

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 2461296 (class 33) – TRAVELLER - in the name of Sazerac Brands, LLC

Delegate:

Anne Makrigiorgos

Representation:

Applicant: Addisons Lawyers

Decision:

2025 ATMO 109

Trade Marks Act 1995 (Cth) – section 33 proceeding - s 44 ground for rejection considered –use of trade mark is likely to give rise to deception or confusion – trade mark application rejected

Background

On 26 June 2024, Sazerac Brands, LLC (‘Applicant’) applied to register trade mark number 2461296 (‘Application’) pursuant to the provisions of the Trade Marks Act 1995 (Cth).[1] Details of the Application appear below:

Filing Date: 26 June 2024
Priority Date: 24 April 2024[2]
Trade Mark: TRAVELLER (‘Trade Mark’)
Specification: Class 33: Spirits [beverages]; spirits and liquors; liqueurs; aperitifs; digesters [liqueurs and spirits]; distilled beverages; distilled spirits; blended spirits; whiskey; blended whiskey; flavoured whiskey; bourbon whiskey; bourbon; flavoured bourbon; cocktails; hard seltzers; pre-mixed alcoholic beverages, other than beer-based (‘Applicant’s Goods’).
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations1995 (Cth).
[2] Convention priority claimed from United Kingdom trade mark number UK00004043402.

The Application was examined as required under s 33. On 3 July 2024, IP Australia issued an Adverse Examination Report identifying grounds for rejection under s 44. The examiner raised five prior registrations as objections to registration of the Trade Mark. Four of these citations were overcome by the Applicant after responding to the Adverse Examination Report. The examiner maintained the following prior registration (‘Cited Mark’) in a second Adverse Examination Report:
Registration number: 1868614
Trade mark:
Filing date: 5 September 2017
Owner: Blackgate Estate Pty Ltd
Specification: Class 33: Wine
Endorsement: It is a condition of registration that the trade mark will only be used under the conditions entered on the Register of Protected Geographical indications and Other Terms for use of the Geographical Indication AUSTRALIA and that the use will accord with the Australian Grape and Wine Authority Act 2013.
The examiner raised the Cited Mark as a ground for rejection on the basis that the Trade Mark closely resembled the Cited Mark because the word TRAVELLER was the essential element in both trade marks. While acknowledging that the Cited Mark includes additional text elements, the examiner did not consider these elements sufficient to differentiate the trade marks. Further, the goods of the Cited Mark were similar to the Applicant’s Goods.
The Applicant filed submissions in response that there was a clear overall visual dissimilarity between the trade marks and the trade marks were registered in respect of different goods.
IP Australia issued a second Adverse Examination Report on 11 November 2024. The examiner maintained the Cited Mark stating that the word TRAVELLER is presented as the dominant…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Trade mark application number 2461296 (class 33) – and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2025] ATMO 109
Decision Date: 6 June 2025

CaseChat Overview and Summary

Sazerac Brands, LLC (‘Applicant’) applied to register the trade mark TRAVELLER in Class 33 for various alcoholic beverages. The application was examined and an Adverse Examination Report was issued, identifying grounds for rejection under section 44 of the *Trade Marks Act 1995* (Cth) due to a cited registered trade mark, number 1868614, owned by Blackgate Estate Pty Ltd, for the mark TRAVELLER in Class 33 for wine. The Applicant requested a hearing by way of written submissions.

The delegate was required to determine whether the Applicant’s trade mark TRAVELLER was substantially identical with, or deceptively similar to, the cited mark TRAVELLER, and whether the Applicant’s goods were similar or closely related to the goods covered by the cited mark. The delegate also had to consider whether the use of the Applicant’s trade mark was likely to deceive or cause confusion, having regard to the provisions of section 44 and section 10 of the Act.

Applying the principles of deceptive similarity, the delegate considered the overall impression of the marks, allowing for imperfect recollection. While acknowledging the common element of the word TRAVELLER, the delegate found that a side-by-side comparison revealed a total impression of dissimilarity between the two marks. Furthermore, the delegate was satisfied that the Applicant’s goods, encompassing a wide range of spirits and pre-mixed alcoholic beverages, were of the same description as wine, the goods covered by the cited mark, based on their nature, purpose, trade channels, and the likelihood of consumers perceiving them as originating from the same source. Despite this similarity in goods, the delegate concluded that the trade marks were not substantially identical and, crucially, that the TRAVELLER mark for spirits was not deceptively similar to the TRAVELLER mark for wine, as the overall impression conveyed by the marks, when considered in their entirety and allowing for imperfect recollection, was one of dissimilarity.

The delegate found that the third requirement for a valid objection under section 44, namely that the applicant’s trade mark must be substantially identical with or deceptively similar to the cited mark, was not satisfied. Consequently, the application for the trade mark TRAVELLER was not rejected on the grounds of deceptive similarity to the cited mark.

Orders