Mastronardi Produce Ltd v The Registrar of Trade
Marks  FC 1021
Use of product variety names as a trade mark – inherent
M applied to register ZIMA as a brand name for tomatoes in class
The Registrar refused the application: it was not inherently
adapted to distinguish (section 41(6), being descriptive of a type
of tomato and that its registration would be likely to deceive or
cause confusion (section 43) if M used the mark other than for the
type of tomato with which consumers associated the name.
M appealed to the Federal Court.
COURT DECISION AND REASONING
The 2 stage test proposed by Kitto J in Clarke Equipment case in
1964 applies to inherent distinctiveness (reasonably consistent
with the decision of the High Court in the Cantarella Bros case
how would "ZIMA" be understood by "ordinary
Australians" on seeing it for the first time; and
how likely is it the other traders, without improper motive,
would wish to use the mark in connection with tomatoes in a way
which would infringe the trade mark?
ZIMA is a word invented by M which had no meaning to ordinary
Australians as at the date of first use.
The Registrar argued that Zima was a term for a particular
variety of tomatoes however the evidence before the Court did not
clearly prove this and M produced evidence to show that it marketed
various types of tomato under the name (not just one variety). M
showed that it used the mark in the form of ZIMATM golden grape
tomatoes, ZIMATM sweet orange grape tomatoes and similar –
clear trade mark use.
There were plenty of other terms a trader could use to describe
its golden grape tomatoes or sweet orange grape tomatoes and
accordingly the mark was inherently adapted to distinguish.
Unusually, instead of ordering that the trade mark proceed to
acceptance, the judge ordered that the mark be registered pursuant
to section 41(3) – inherently adapted to distinguish. This
order meant that other traders were denied the opportunity to
oppose the trade mark following acceptance.
Invented words are the best trade marks and are more likely to
be inherently distinctive (having no understood meaning).
Careful use of the relevant words as a trade mark will improve
registrability, particularly for a mark which is at risk of
becoming generic or descriptive (in this case, as referring to a
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