Mastronardi Produce Ltd [2013] ATMO 83


The applicant applied to register its trade mark ZIMA in relation to tomatoes in Class 31. The application was objected to by the Trade Marks Office on the grounds of sections 41 (likely to be needed by other traders) and 43 (likely to deceive or cause confusion).

ZIMA was a trade mark coined by the applicant to describe its own particular variety of tomato plant. The Hearing Officer noted, ‘[t]he information I have found strongly suggests that ZIMA is the name of a particular cultivated variety of Solanum lycopersicum which the Applicant is growing and marketing.’

The Hearing Officer held that this indicates that other traders have a legitatmate interest in using the trade mark and the grounds for rejection remain. In response, the applicant claimed:

‘[T]here is no suggestion that the applicant has developed any new plant variety in the sense considered under plant breeder’s rights legislation. Moreover, the marketing materials issued by the Applicant itself repeatedly use the TM sign to emphasise that ZIMA is a commercial brand.’

The Hearing Office did not agree and concluded that the ‘[a]pplicant uses the word ZIMA, and also that the buying public regard the word ZIMA, as a reference to a particular cultivated variety of orange grape tomato’. The section 41 ground was maintained.

Similarly, the Hearing Officer found that as the buying public understand (and have been educated by the applicant to understand) that ZIMA refers to a particular cultivated variety of orange grape tomato, its use in relation to any other type of tomato (as covered under the application) would lead to potential deception or confusion. The section 43 ground was maintained..

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