Trade Mark News & Information

Trademark Lawyers Australia – Federal Court – Zima

Mastronardi Produce Ltd v Registrar of Trade Marks [2014] FCA 1021 (19 September 2014)

Successful appeal by Mastronardi setting aside the Registrar’s decision refusing registration (reported in October 2013). Gordon J held that ZIMA was registrable for tomatoes and, contrary to the hearing officer’s view, was not a name for a new variety of golden grape tomato.

The ZIMA trade mark application was filed on 25 July 2011, but Mastronardi did not commence selling ZIMA tomatoes in Australia until October 2013. It has also been granted registration of its ZIMA trade mark in Canada, USA and New Zealand.

Section 41 in its terms prior to the Raising the Bar amendments on 15 April 2013 was applicable and her Honour approved the traditional two stage analysis outlined in Blount Inc v Registrar of Trade Marks [1998]FCA 440.

For the important first stage, ZIMA is presumed to be sufficiently inherently adapted to distinguish the designated goods unless the Court is satisfied otherwise on the balance of probabilities. Inherent adaptability is something which depends on the nature of the trade mark itself and is not something that can be acquired. The inherent nature of a trade mark cannot be changed by use or otherwise. It is something which is an essential permanent characteristic and intrinsic to the trade mark. Each case must be considered and determined on its own facts.

This may be evaluated by asking two questions, namely (1) how would ZIMA be understood as at 25 July 2011 by ordinary Australians seeing it for the first time used in respect of tomatoes; and (2) how likely is it that other persons, trading in tomatoes and being actuated only by proper motives, will think of the word ZIMA and want to use it in connexion with tomatoes in any manner which would infringe a registered trade mark granted in respect of it?

The Registrar’s position was that that Mastronardi intends to use ZIMA to distinguish its particular kind of tomatoes from other kinds of tomatoes and not as a trade mark to distinguish its tomatoes from those of other traders. Also, there was a “factual monopoly” because Mastronardi is the controller of seeds that come to be grown by its licensee in Australia, and names given to newly invented products, or products the subject of a monopoly, are a relevant class or category of descriptive words.

Mastronardi maintained that ZIMA was not the name of a new variety of tomato and relied on unchallenged expert evidence that ZIMA does not refer to, and is not used by, suppliers, retailers and consumers, as a variety of tomato. There are a number of descriptors that other traders could find within the common heritage of the language to describe these tomatoes without having to use the word ZIMA. The expert evidence noted that terminology such as “golden snacking tomatoes” would be sufficient information for the supplier to provide to the consumer, and then the supplier can apply its own brand name to the product.

Based on the evidence and background to marketing of tomatoes in Australia, her Honour decided it is unlikely that other persons, trading in tomatoes and being actuated only by proper motives, will think of the word ZIMA and want to use it in connection with tomatoes in any manner which would infringe a registered trade mark granted in respect of it. As a result, the word ZIMA is inherently adapted to distinguish Mastronardi’s tomatoes from those of its trade rivals and to indicate the trade source of its tomatoes. It should be registered.