SAZERAC COMPANY, INC. V LIQUID EXCHANGE PTY LTD [2015] ATMO 4

Sazarec Company opposed the registration of the trade mark BUFFALO BILL applied for by Liquid Exchange Pty Ltd covering inter alia “spirits (beverages)” and “bourbon whisky”.

Sazarec is the owner of a prior registration for the trade mark BUFFALO TRACE covering “bourbon”. Sazarec also alleged a reputation in the trade mark BUFFALO TRACE, as well as the word BUFFALO.

Sazarec further alleged that Liquid Exchange did not have an intention to use the trade mark BUFFALO BILL in relation to the applied for goods.

The Hearing Officer found that the trade marks BUFFALO BILL and BUFFALO TRACE were sufficiently different, visually, aurally and conceptually, such that there was no danger of confusion or deception.

When it came time for the Hearing Officer to decide whether the opponent held a significant reputation in the mark BUFFALO TRACE in relation to the applied for the goods, it was noted that the opponent’s reputation was “modest” and as a result members of the Australian public who frequent liquor stores or who order drinks at licensed establishments would be unlikely to be misled into thinking that the goods bearing the trade mark BUFFALO BILL come from the opponent, or be likely to wonder whether that might not be the case.

Furthermore, the Hearing Officer could not find the opponent held a sufficient reputation in the word “buffalo” or the image of a buffalo. The Hearing Officer characterised the opponent’s use in this respect as “aspirational” and that the opponent’s reputation was not sufficient to create a situation of real tangible danger of deception or confusion arising.

In terms of the applicant’s intention to use the trade mark BUFFALO BILL, the Hearing Officer noted that while the evidence might raise an eyebrow as to the applicant’s good faith intention, it did not, in the Hearing Officer’s view, demonstrate a lack of intention to use the trade mark in Australia.

The application was allowed to proceed to registration.

To view the Office decision, click here.