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
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
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
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
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.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
Shelston IP has been awarded the MIP Global Award for
Australian IP Firm of the Year 2013.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).