Rotten (Zima) Tomato for the Trade Marks Registrar

Mastronardi Produce Ltd v The Registrar of Trade Marks [2014] FC 1021

Key issue

Use of product variety names as a trade mark – inherent distinctiveness.


M applied to register ZIMA as a brand name for tomatoes in class 31.

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 above):

  • 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, ZIMATMsweet 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.

Key lessons

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 tomato variety).