Dr. Victoria Longshaw and Mr. David Franklin
In the recent Federal Court decision, Mastronardi Produce Ltd v Registrar of Trade Marks , Mastronardi Produce Ltd appealed the 23 October 2013 decision of the Delegate of the Registrar of Trade Marks which rejected its Trade Mark Application for “ZIMA” in class 31 for tomatoes.
This decision is of interest to Applicants and owners of Registered Trade Marks associated with plant varieties in Australia.
Mastronardi is a Canadian company producing wholesale fruit and vegetables, including tomatoes. Mr Paul Mastronardi, the president of Mastronardi, coined the word “ZIMA” in early 2010 for a range of golden grape or orange grape tomatoes. The word “ZIMA” had no meaning in the English language, and had not been previously associated in any way with tomatoes in Australia or elsewhere.
Mastronardi obtained Trade Mark Registrations for ZIMA in Canada with effect from 26 April 2010, in the United States with effect from 30 July 2010, in Japan with effect from 27 July 2011, and in New Zealand with effect from 3 August 2011.
On 25 July 2011, Mastronardi filed Australian Trade Mark Application No. 1438732 to register ZIMA in class 31 for “tomatoes.” Between November 2011 and June 2013, the Registrar issued three official reports refusing acceptance and as a result Mastronardi requested a hearing to seek review of the refusal. The matter was heard on 12 September 2013.
In her decision of 23 October 2013, the Delegate rejected the Application, finding that “the word ZIMA appears to be a reference to a single kind of tomato plant and its fruit” and accordingly that it “lacks any inherent adaptation to distinguish the Applicant’s tomatoes as it appears to be an appropriate description of the goods in respect of which it is to be used,” and also finding that the Applicant’s evidence of use of the Mark “demonstrates that the Applicant uses the word ZIMA, and that the buying public regard the word ZIMA, as a reference to a particular cultivated variety of orange grape tomato.” Mastronardi appealed the decision on 14 November 2014.
The Registrar as Respondent contended that the intended use of ZIMA by Mastronardi was not as a Trade Mark to distinguish its goods from those of others, but rather to distinguish its particular kind of tomatoes from other kinds of tomatoes. That is, it was “intended for use to distinguish one variety of tomato introduced by Mastronardi from the generality of tomatoes.” As such, it was likely to be required for use by other traders without improper motive to refer to tomatoes for instance with “ZIMA” characteristics. The Respondent relied on Wheatcroft Brothers Limited’s Trade Marks  Ch 210, which concerned the rejection of a Mark intended to be used as the name of a single new variety of rose which would be characterised by that name in the Register of the relevant Rose Society.
mastronardi argued that ZIMA was not the name of the new variety of tomato and submitted unchallenged expert evidence that the word ZIMA is not used by retailers, suppliers or consumers to refer to a variety of tomato.
Mastronardi also submitted evidence that, in the case of tomatoes, there are hundreds if not thousands of different varieties in Australia, many of which are referred to in terms of broad category names such as cherry, truss, roma, grape and cocktail. It also submitted that often a very large number of cultivars are sold under a particular category such as the golden grape tomato. Suppliers typically assign a name (often an alpha-numeric code) to particular seeds and not the category name associated with that variety. Mastronardi submitted that it uses six different types of seeds to produce six varieties of golden grape tomato, all of which bear the ZIMA trade mark when sold.
The Court reversed the Delegate’s decision, and ordered that the Trade Mark should be registered.
Part of the problem appears to have been due to the use of the word “variety” by Mastronardi to market ZIMA tomatoes. The word “variety” in that context was considered by the Court to have more than one meaning, being a loose term used without precision and used differently in the retail and fresh foods industry compared to its botanical context. The Court found that of the six cultivars presently used by Mastronardi, only two were supplied exclusively to Mastronardi, and that other traders were not prevented from producing orange grape tomatoes from any one of the 50 cultivars available. The Court also considered that a number of descriptors were available to other traders for describing their tomatoes, such as “golden snacking tomatoes.”
The Court applied the test for assessing whether a Trade Mark is “inherently adapted to distinguish” as articulated by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, and concluded that it is unlikely that other persons, trading in tomatoes and being actuated only by proper motives, will think of the invented word ZIMA and desire to use it for tomatoes. The Court also confirmed the dicta of Gibbs J in Burger King v Registrar of Trade Marks (1973) 128 CLR 417 that actual use of the Trade Mark is irrelevant in assessing the inherent nature of the Trade Mark itself.
Take home message
This decision is a welcome confirmation that distinctive Trade Marks used in connection with fruit, vegetables and other plant varieties should not be automatically rejected as unregistrable if they are in fact used as a sign to distinguish the Applicant’s goods rather than as a plant varietal name. While this decision turned on the facts of the case, any Applicant finding themselves in a similar situation may wish to challenge any Section 41 rejection by the Registrar made on the grounds that the Mark is a varietal name or used as the name of a single kind of plant.
In summary, in circumstances where the Trade Mark is a distinctive Mark (such as an invented word) and is used as a Trade Mark by a trader to distinguish its fruit from the fruit of other traders, all things being equal the Trade Mark should be registrable. However, if the Trade Mark is used to denote a single plant variety, especially where the plant variety is on an official register with a varietal name identical to the Trade Mark, and other traders arguably need to use the Trade Mark to refer to that plant variety, it will be very difficult to register that Mark in Australia.