In Mastronardi Produce Ltd v Registrar of Trademarks ( FCA 1021, September 19 2014), Mastronardi Produce Limited has succeeded in an appeal against a decision of the registrar of trademarks that refused registration of the trademark ZIMA for tomatoes.
The principal issue in contention was whether ZIMA functions as a trademark to distinguish the goods of Mastronardi from those of other traders, or whether it functions as the name of a variety, or generic type, of tomato.
The starting point for assessing questions of inherent registrability is a presumption that the mark is sufficiently adapted to distinguish, unless the court is satisfied otherwise on the balance of probabilities. After acknowledging that, Gordon J indicated that there were two questions to be decided:
- how would the word ‘zima’ be understood by ordinary Australians at the filing date (namely July 25 2011) and
- the likelihood of other persons trading in tomatoes, and being actuated only by proper motives, thinking of the word ‘zima’ and wanting to use it in connection with their tomatoes, in any manner which would infringe a registered trademark.
The first question was answered quickly in favour of Mastronardi. It coined the word in early 2010 and, as at July 25 2011, it would convey no obvious meaning to ordinary Australians.
When Mastronardi launched its Zima product, its press release referred to it as “its newest variety”. Consequently, in relation to the second question, the registrar argued that ZIMA is used, and will be required by others, to identify a particular type or variety of tomato.
Gordon J found that the word ‘variety’ is a loose term used without precision. While in a botanical context it might mean a specific cultivar, “in the fresh foods industry and at a retail level, the position is different. There is no common meaning of the word ‘variety’”.
There is a very large number of different tomato varieties, and tomato plants are not a permanent crop. This means that, at the end of each year, the plants are removed and new plants, which can be new varieties, are planted. Owing to the large number of varieties, category names, such as cherry, truss, roma, baby roma, grape and cocktail, have been developed and have come to be commonly used (although their use can be quite rubbery). According to the evidence, those general category names, rather than some more specific varietal names, are used as descriptors in the marketing and selling of tomatoes.
Although Mastronardi’s launch referred to its Zima product as “its newest variety”, it also referred to the product as a “golden orange grape snacking variety”. There was also evidence that, on other occasions, Mastronardi and its licensees referred to the tomatoes as “golden grape tomatoes”, “sweet orange grape tomatoes” and “golden snacking tomatoes”.
In addition, although only one cultivar is presently used in Australia, internationally Mastronardi uses six cultivars to produce its Zima tomatoes. In the circumstances, Gordon J concluded that other persons trading in tomatoes and being actuated only by proper motives will not wish to use the word ‘zima’ to describe their tomatoes, and concluded that “it is no answer to Mastronardi’s claim to say only that the goods which it sells are different from the goods sold by its trade rivals”.
Consequently, it was decided that the ZIMA mark distinguishes Mastronardi’s products and should be registered.
The case is a reminder that producers of ‘new’ products can readily devise and register distinctive trademarks for those products. However, they should be careful to ensure that there are readily available generic descriptions which other traders can use for similar products. Those descriptions should also be used in their marketing materials.
This article first appeared in World Trademark Review, 13 October 2014.