1. 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.
2. 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.
3. 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 element in terms of its size and prominence within the Cited Mark as a whole. The examiner also stated that the Applicant's Goods were similar to the goods of the Cited Mark referring to IP Australia's Trade Marks Manual at Part 32B 2.4.2.
4. The Applicant requested a hearing by way of written submissions on 11 April 2025. The Applicant filed its written submissions drafted by James Lawrence of Addisons Lawyers on 21 May 2025.
5. As a preliminary matter, I note that the Application is subject to a presumption of registrability under s 33. As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the Application. I must also consider afresh the ground for rejection under s 44 identified by the examiner and I am not bound by the examiner's findings. Nor is this hearing a review of the examiner's objections. Whilst I may consider reasoning provided by the examiner in support of the objection, ultimately, I must make a decision based on my interpretation of the facts and law.

1. Section 44 relevantly provides (some notes omitted):

(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

1. For the Cited Mark to constitute a valid objection to the registration of the Trade Mark, it must be a trade mark registered or sought to be registered by a person other than the Applicant and:
   • have a priority date which is earlier than that of the Application ('first requirement');
   • be in respect of goods and/or services that are similar or closely related to the Applicant's Goods ('second requirement'); and.
   • be substantially identical with or deceptively similar to the Trade Mark ('third requirement').
2. The Cited Mark is in the name of someone other than the Applicant and has an earlier priority date than the Application. The first requirement is therefore satisfied. I now turn to the question of whether the Applicant's Goods are similar or closely related to the goods of the Cited Mark.
3. Goods are 'similar' to other goods if they are the same or of the same description as the other goods.[3] The factors relevant to the consideration of whether goods are similar include the nature, purpose, use, source of manufacture and respective trade channels of the goods and whether the ordinary consumer of the goods would regard the goods as being from a single source.[4] No single consideration is conclusive in itself.[5]
4. In considering the Applicant's Goods and the goods of the Cited Mark, I should look to the ordinary meaning of the words and the notional normal and fair use. I should consider the context in deciding whether ordinary consumers of the goods would see the goods as having the same trade origin.[6] Overall, the matter is to be determined from a business point of view.[7]
5. There have been a number of decisions in the courts which have considered whether different types of alcoholic beverages are similar. Relevantly, the Full Federal Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd[8] said that the different manner of manufacture of beer on the one hand and wine on the other establishes that they are not the same goods. However, it continued to say:

[I]t is unlikely that this difference would be significant to the consuming public if, as His Honour found, large producers of alcoholic beverages produce a range of products. Additionally it is important to bear in mind that this issue is being considered in the more general context of whether consumers might see the goods as having the same trade origin.

1. With respect to the manner in which beer and wine were sold the Full Court said that:

If large producers of alcoholic beverages are producing a range of products then the fact that the wine might be sold in a slightly different way would not be a difference of significance to the consuming public who may come to consider the trade origins of [the respondent's] beer.

1. In the United Kingdom it is settled practice to regard whisky and wine as goods of the same description as noted in Balmoral Trade Mark.[9]
2. In Re Australian Wine Importers' Trade Mark, the United Kingdom Court of Appeal dismissed an appeal from a decision of Kay J. Cotton LJ held:

... Well, it is not confined to the same goods, but it is 'the same goods or description of goods;' and if it were necessary to decide it absolutely on that point, my opinion would be that there was an application for registration with respect to the same description of goods; because although wine and whiskey, and wine and spirits are in a great many ways considered as different goods, yet we are not considering here how chemists would describe them, but whether manufacturers would describe them as being the same description of goods or not. We find that they are goods which are generally sold by the same persons, and for the purposes of trade may, in some respects, be considered as the same description of goods; for they are both alcoholic, and although there may be differences in them, they may fairly be considered as coming within the same description of goods, though they are not the same goods ...[10]

Of course one has to look at the trade. One must look at it from a business point of view. They are alcoholic and spirituous. They are sold in this country constantly by the same people. Wine and spirit dealers are common enough in this country, and I am not sure that they are not the same description of goods; but whether they are or not, it seems to me that they are so uncommonly near the line that we ought not to depart from the view taken by Mr Justice Kay, and say to the Comptroller, 'You must register in favour of these wine merchants a mark which is already on the Register in favour of a spirit merchant who is also a wine merchant.' It appears to me that Mr Justice Kay has taken the right view of the case, and that we ought not to interfere with his Order. These observations disclose, at the very least, that questions of fine judgment may be involved.[11]

1. The Applicant's Goods include a broad claim to 'spirits, liquors, liqueurs, aperitifs, digesters, distilled beverages, distilled spirits, blended spirits, hard selzers and pre-mixed alcoholic beverages, other than beer-based' and individual claims to whiskies and bourbon. The Cited Mark claims wine.
2. I am satisfied that from a business point of view and considering the trade origins of the respective goods, the Applicant's Goods are of the same description as wine. There is similarity in the nature and purpose of alcoholic beverages: be they wine, spirits or beer, they are sold to the public for consumption. Today, alcoholic beverages of all types are made, distributed and sold by the same manufacturers to the same customers and are present in the same retail outlets, often in some degree of proximity to each other. From my own knowledge, I am aware of alcoholic beverage companies such as Asahi, Diageo and Anheuser-Busch InBev who make and distribute a wide variety of alcoholic beverages which include beers, wines and spirits. Further, many of the Applicant's Goods can contain wine as an ingredient such as pre-mixed alcoholic beverages, hard seltzers, aperitifs and digestives or are made from grapes such as brandy, cognac, armagnac, pisco and grappa.
3. As I consider the Applicant's Goods are of the same description as wine, the second requirement is satisfied. I now turn to the question of whether the Trade Mark is substantially identical or deceptively similar to the Cited Mark.
4. The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd ('Shell'), where his Honour stated:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[12]

1. In my opinion, a total impression of dissimilarity emerges from a side by side comparison of the respective marks. Therefore, I do not consider the Trade Mark to be substantially identical with the Cited Mark.
2. I move to consider whether the Trade Mark is deceptively similar to the Cited Mark.
3. Section 10 provides a definition of deceptively similar being that 'a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion'.
4. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[13]

1. The respective trade marks must be compared as wholes,[14] having regard to essential or distinguishing features,[15] and considering the marks visually and aurally, and in the context of the relevant surrounding circumstances.[16] What must be considered is the overall impression that the notional buyer, being a person of ordinary intelligence and memory, would likely have of the Trade Mark and the Cited Mark, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.[17]
2. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J noted the following regarding the risk of deception or confusion:

While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[18]

1. Deceived implies the creation of an incorrect belief or mental impression; 'causing confusion' may merely involve 'perplexing or mixing up the minds' of potential customers.[19]
2. In relation to the comparison of marks, the Full Court said in Starr Partners Pty Ltd v Dev Prem Pty Ltd:

The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.[20]

1. Thus, the presence of a common element is not conclusive to a finding of deceptive similarity[21] and the determination of the question 'must necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration'.[22]
2. The commonality of idea is part of the process of determining if the marks look or sound alike. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd, the High Court observed:

[t]he fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.[23]

1. In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side by side comparison of the Trade Mark and the Cited Mark. I must compare the marks as wholes, visually and aurally considering all their elements with regard to essential or distinguishing features, in the context of the relevant surrounding circumstances. Of importance is the effect and meaning of the trade marks, particularly their effect or impression produced on the mind of ordinary consumers.
2. The Applicant submits that:
   • there are sufficient differences in comparison of the Cited Mark, being a composite mark, with the Trade Mark being a word mark;
   • while 'TRAVELLER' is an element of the Cited Mark, it is accompanied by the word Australia in gold and images of a vineyard, 3 rubber stamps, one of which is red, and a bunch of grapes;
   • the rights of the owner of the Cited Mark relate to the device as a whole and do not extend to rights in the individual components of the device, and certainly do not provide a monopoly in the word 'TRAVELLER' solus, referring to the commentary of the Full Federal Court in Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited that 'caution needs to be exercised before characterising words in a complex composite registered trade mark as an 'essential feature' of that mark';[24]
   • there is clear overall visual dissimilarity;
   • the Cited Mark contains an endorsement that use of the term Australia will accord with the Australian Grape and Wine Authority Act 2013;
   • even when a mark is wholly contained within another mark, a finding of deceptive similarity is not automatic and depends on the extent of the shared element and other additional elements; and
   • the market through which the goods will be purchased are different.
3. Prior to making my determination on whether the Trade Mark is deceptively similar to the Cited Mark, I make the following comments on the Applicant's submissions. While the Applicant submits that the Cited Mark contains the word Australia in gold and 3 rubber stamps, one of which is red, I note that the Cited Mark has no colour limitation. The Cited Mark is therefore taken to be registered for all colours.[25] As a consequence, the fact that some elements of the Cited Mark are in colour is of no significance in my comparison of the respective marks as I am to consider the notional use of the trade marks. That is, I am to consider the fair and normal possible uses of the trade marks to the extent of the respective specifications of goods.
4. The Applicant's submissions based on the endorsement on the Cited Mark go nowhere. The endorsement has no effect on the identity of the Cited Mark to the ordinary reasonable consumer and nor is it something of which the ordinary reasonable consumer would be aware. As such, the endorsement has no effect on whether the Trade Mark is deceptively similar to the Cited Mark.
5. As I have found that the Applicant's Goods are of the same description as the goods of the Cited Mark, I disagree with the Applicant's submission that the market through which the goods will be purchased are different.
6. The Applicant also refers to the cases of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd,[26] McD Asia Pacific LLC v Hungry Jack's Pty Ltd,[27] and The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd.[28] I note that the comparison of marks before the court in these cases was very different to that before me. The marks compared were either word marks, word and sylised word marks and/or contained descriptive words.[29] I also note the Applicant submits that In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd[30] should be treated with significant caution. Given that this case was appealed to the Full Federal Court[31] and the Full Federal Court agreed with the primary judge, I do not understand why the Applicant submits that this case be treated with significant caution.
7. The Cited Mark is a composite mark consisting of two word components, the larger and distinctive word TRAVELLER, a well known English word, and the much smaller word Australia. While the word Australia cannot be ignored,[32] it is non distinctive, indicating that the goods are Australian in origin, so it can to some extent be discounted in comparing the respective marks.[33] I am aware that the scope of the Cited Mark is not merely the words TRAVELLER and Australia, it is those words accompanied by images of a vineyard, 3 rubber stamps (at least two containing indicia of Australia namely a map of Australia and a kangaroo) and a bunch of grapes. While I am cognisant of the words in Crazy Ron's, in this case I have considered all the elements of the Cited Mark in their context including the size, prominence, and the stylisation of words and devices, and the relationship of all these elements to each other. After doing so, when visually considering the Cited Mark as a whole, to me, the word TRAVELLER remains a noticeable and essential feature of the Trade Mark which strikes the eye and has the greatest effect or impression produced on the mind of an ordinary consumer. Therefore, it is this word which is more likely to be recalled, particularly with imperfect recollection.
8. Aurally, the word TRAVELLER is identical in each mark. Given that TRAVELLER is the distinctive word element of the Cited Mark, I find that this word is a key aural feature. I find that the word TRAVELLER in the Cited Mark has greater relevance in an aural comparison of the marks as consumers will more naturally remember and refer to a word when ordering a product where a trade mark combines a device with a word.[34] In addition, similarities between the verbal features of the marks may give rise to confusion notwithstanding that one of the marks contains accompanying device elements and the other does not.[35]
9. In my opinion, the device elements and the word Australia in the Cited Mark do not overwhelm the identity of the word TRAVELLER and thus the word TRAVELLER will inform the basis for any recollection (imperfect or otherwise) of the trade marks by a potential purchaser. Given the essential word element in the trade marks is identical, the device elements and the word Australia in the Cited Mark do not serve to sufficiently differentiate the marks and thus remove the likelihood of confusion or cause to wonder.
10. The context of the comparison is of course relevant. I have already found that the Applicant's Goods and the goods of the Cited Mark are made, distributed and sold by the same large manufacturers to the same customers. I consider the consumers of these goods to be anyone over the age of 18. Thus, the consumers of the respective goods overlap. Further, there is nothing to suggest that the Applicant's Goods and goods of the Cited Mark are not requested verbally either instore or in a restaurant.
11. The Applicant submits that 'an expensive item is less likely for a consumer to make a quick decision for such as expensive alcoholic beverages'. The fact is that alcoholic beverages vary widely in price in all categories from wine to spirits to beers and everything in between. Therefore, it is not correct to submit that consumers of alcoholic beverages are more likely to pay careful attention to the brand. That may be true of some consumers but it is just as likely that consumers of alcoholic beverages will be guided by price and will buy on that basis, not caring about the brand.
12. The Applicant also provides submissions which are directed solely to a comparison of the respective marks for whiskey goods claiming they are different product offerings and stating that 'it is unlikely that a whiskey connoisseur will come to believe that the Cited Mark in the wine section of say for example a Dan Murphys store has any connection with the whiskey goods, let alone, leave the store with the impression that the Cited Mark may be connected to the Trade Mark or that the products originate from the same source'. I do not find the Applicant's submissions persuasive given my conclusion that spirits including whiskey are goods of the same description as wine from a business and consumer point of view.
13. Having assessed the visual, aural, and conceptual similarities and differences between the Cited Mark and the Trade Mark and the context described in the preceding paragraphs of this decision, and after giving weight to the possibility of imperfect recollection and therefore the possibility that consumers may not remember specific details of the respective marks but instead may recall their general idea or appearance, I find there is a real, tangible danger of confusion and I am satisfied that a number of customers would be caused to wonder whether it might not be the case that the respective goods come from the same source.
14. The Trade Mark is deceptively similar to the Cited Mark.
15. For completeness, the Applicant has not filed any evidence that would permit a finding of honest concurrent use or prior use. Nor has the Applicant drawn my attention to any other relevant circumstances that may be considered under section 44(3)(b).

1. Section 33 of the Act provides (notes omitted):

(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a) the application has not been made in accordance with this Act; or

(b) there are grounds under this Act for rejecting it.

(2) The Registrar may accept the application subject to conditions or limitations.

(a) the application has not been made in accordance with this Act; or

(b) there are grounds under this Act for rejecting it;

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

1. As I am satisfied on the balance of probabilities that there is a ground for rejecting the Application under s 44, I reject the Application for possible registration.
2. 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 Application be in accordance with the court's direction or order.

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

[2] Convention priority claimed from United Kingdom trade mark number UK00004043402.

[4] Re Jellinek's Application [1946] 63 RPC 59 (Romer J).

[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) ('Southern Cross').

[6] Ibid. See also E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ) ('Gallo').

[7] San Remo Macaroni Co Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842, [35] (Goldberg J).

[9] (1999) RPC 297 (Hobbs QC).

[10] [1889] UKLawRpCh 46; (1889) 6 RPC 311, 316 (Cotton, Lindley and Lopes LJ).

[12] [1963] HCA 66, [12].

[14] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 [50]. See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

[15] Crazy Ron's Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ) ('Crazy Ron's').

[16] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (Gummow J).

[17] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer J. Spence).

[19] Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[20] [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).

[21] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864 (Burchett J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).

[22] Re Frigiking Trade Mark [1973] RPC 739, 752 (Ch D).

[23] [1952] HCA 15; (1952) 86 CLR 536, 539 (Dixon CJ, Williams, McTiernan, Webb and Kitto JJ).

[24] Crazy Ron's (n 15), [100] (Moore, Sackville and Emmett JJ).

[26] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[27] [2023] FCA 1412 (Burley J).

[28] [2023] FCA 482, [55] (Jackman J).

[29] The comparisons being Protox v Botox, Big Mac v Big Jack and v The North Agency.

[30] [2020] FCA 193 (Katzmann J).

[31] Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235 (Nicholas, Yates and Burley JJ).

[32] Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).

[33] Re Broadhead's Application (1950) 67 RPC 209, 215 (Evershed MR); Mond Staffordshire Refinery Co Ltd v Harlem [1929] HCA 6; (1929) 41 CLR 475, 477-8 (Know CJ, Gavan, Duffy, and Starke JJ).

[34] Golden Crumpet Co Australasia v Hardings Manufacturers Pty Ltd (1987) 8 IPR 147, 154 (Hearing Officer Nancarrow).

[35] Plantmark Pty Ltd v Wal-Mart Stores, Inc [2003] ATMO 9 (Hearing Officer Skivington).