What's in a name? That which we call a tomato 
By any other name would still be a tomato

(apologies to William Shakespeare)

The decision of the Registrar highlights the complexities faced by companies in securing trade mark protection for fresh fruits and vegetables. 

History

It has been the long held by position by IP Australia that the varietal name of a plant cannot be used as a trade mark. Prior to amendment of the Trade Marks Act 1995 (The Act) – the applicant of a trade mark for a plant was required to agree to an endorsement before securing registration:

It is a condition of registration that the word [insert trade mark] will not be used a a varietal name.

This requirement was removed following implementation of the The Act. Under the current Act, trade marks covering plants are subject to an additional step in examination based on plant variety considerations.

The case in question…

Mastronardi Product Ltd filed an application for registration of the trade mark ZIMA in respect of tomatoes in class 31. 

The objection raised by the Examiner was based on the presumption that the word ZIMA is the name of a particular variety of tomato plant from the genus SOLANUM LYCOPERSICON. According to the Examiner – ‘a trade mark should be able to be used on any number of different plants. However if a trade mark’s main feature is the name of a plant, other traders will need to use it to identify that plant’. 

At Hearing

The Delegate undertook her own Internet research and located use of the word ZIMA both by the Applicant and others, referring to ‘Zima, an orange grape tomato’ and ‘the Zima tomato’. 

From this, the Delegate determined that the word ZIMA appeared to be a reference to a single kind of tomato plant and its fruit, and that ‘such use demonstrates that the trade mark lacks any inherent adaptation to distinguish the Applicant’s tomatoes as it appears to be an appropriate description of the goods’.

Mastronardi had filed evidence of use during examination and indicated ‘in the future - will produce other different gold grape tomato varieties which will be sold under the Trade Mark’. 

It was pointed out that the trade mark ZIMA is not registered as a variety under plant breeder’s rights legislation in any country, let alone in Australia. In marketing materials Mastronardi used the TM sign to emphasise that ZIMA is a commercial brand.

Furthermore, Mastronardi had made efforts to educate the buying public ‘that ZIMA is a reference to a particular brand name, and not a reference to a particular tomato variety’.

The term ‘variety’ is a loaded term - especially for fresh fruit and vegetables where the change in marketing practice over the past few years for such goods has been dramatic. 

Since the introduction of Plant Breeder’s Rights legislation – ‘variety’ has a legal meaning as well as its common meaning(s). The UPOV (International Union for the Protection of New Varieties of Plants) convention defines ‘variety’ – as meaning a plant grouping within a single botanical taxon of the lowest known rank . It is unlikely that the average consumer would be aware of this meaning. 

Decision

The Delegate refused the registration as the evidence ‘demonstrates that the Applicant uses the word ZIMA - and also that the buying public regard the word ZIMA - as a reference to a particular cultivated variety of orange grape tomato’. 

It seems that marketers of fresh fruit and vegetables have an uphill battle. They are now obliged to educate the public on the UPOV definition of variety, as well as explaining to the public the difference between a variety name and a trade mark. 

A hard row to hoe.