ZIMA tomato trade mark far from rotten
Peter Heerey AM, QC, Tom Cordiner & Alan Nash
Correspondents for South Australia, Victoria and Western Australia
Note: Where any of the barristers were involved in a case reported below and the matter is still running, or potentially so, the other correspondents have taken the role of reporting that case.
Trade marks – invented word – whether intended to be synonymous with the category of goods
In Mastronardi Produce Ltd v Registrar of Trade Marks  FCA 1021 (19 September 2014) Justice Gordon has overturned a decision of the Registrar to reject the mark ZIMA in respect of tomatoes.
Notwithstanding that ZIMA was a word invented by Mastronardi with no connection with tomatoes anywhere in the world, the Registrar’s concern was that Mastronardi intended to use ZIMA to distinguish its particular kind of tomatoes (a “golden” or “orange” “grape” variety) from other kinds of tomatoes and not as a trade mark to distinguish its tomatoes from those of other traders.
Noting the difference between “variety” of tomato in a botanical sense as opposed to a marketing sense (where “category” might be a more apt label), her Honour disagreed with the Registrar’s characterisation of what Mastronardi was seeking to achieve.
Mastronardi did not have a monopoly over the various cultivars for tomatoes having the features of a “golden snacking tomato” (as Mastronardi described the “category”), and other traders were free to grow tomatoes in that category and brand them as they wished. Mastronardi was seeking to identify the source and quality of its tomatoes and distinguish them from those of its rivals. That is what a trade mark is for.