Mastronardi Produce Ltd

[2013] ATMO 83

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1438732(31) – ZIMA - in the name of Mastronardi Produce Ltd.

Delegate:	Alison Windsor
Representation:	Applicant:  Mr Ed Heerey of counsel instructed by Allens Patent and Trade Mark Attorneys
Decision:	2013 ATMO 83 Ex parte hearing: Section 41 – trade mark not adapted to distinguish applicant’s goods – ground for rejection maintained; Section 43 – secondary meaning is that of the applicant’s tomato variety – deception or confusion likely if used in respect of other varieties – ground for rejection maintained - application rejected.

Background

1.     Mastronardi Produce Ltd (‘the Applicant’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’).  The application was filed on 25 July 2011 in class 31 for ‘tomatoes’.  The trade mark is the word ZIMA (‘the Trade Mark’) and the application was given the number 1438732.

2. The application was examined as is required by section 31 of the Act. The first official report issued on 29 November 2011 and raised grounds for rejecting the Trade Mark under both sections 41 and 43 of the Act. The reasons for raising the grounds were explained in the report as follows:

Trade marks which are likely to be needed by other traders

A trade mark is used to distinguish goods such as plants sold by one trader from those sold by other traders. It can be a letter or letters, a word, phrase, name, signature, number, design, shape, colour, sound, scent or symbol. It can also be any combination of these.

A trade mark will more easily meet the requirements of section 41, and will be easier to register, if it is something other traders do not commonly use in relation to plants, and are not likely to need to use.

A trade mark will be more difficult to register if it is something that other traders commonly use in relation to plants, or are likely to need to use.

This is because a trade mark should be able to be used on any number of different plants. However if a trade mark’s main feature is the name of a plant, other traders will need to use it to identify that plant. The trade mark will not be able to differentiate the plant sold by one trader from the same plant sold by other traders.

(For more details, see Section 41 of the Trade Marks Act 1995)

Your trade mark is ZIMA.  This is the name of a particular plant of the genus SOLANUM LYCOPERSICON[sic].[1]  Other traders should be able to use this name to describe their similar goods.

Trade marks should only be used to indicate the trade source of goods, and should not be used as the names of particular plants.  If a trade mark is used as a plant name it could become the accepted name for identifying the particular plant.  If this happened, any trade mark registration might be open to challenge.

I have raised this problem under subsection 41(6) of the Trade Marks Act.

[1] Prior to 2005, the accepted botanical name of the tomato plant was ‘Lycopersicon esculentum’.  Following a review of the genus, in 2005 the name of the plant was changed to ‘Solanum lycopersicum’.  The examiner’s wording in this respect is not strictly accurate – the genus of plant is the genus Solanum – the word ‘lycopersicum’ is a reference to the species of plant within that genus.  Correct wording of the objection would not have included the species name at all.  I note, however, that this does not negate the ground for rejection.

Trade marks which are likely to deceive or cause confusion

A trade mark is used to distinguish the goods or services sold by one trader from those sold by other traders.

A trade mark will be difficult to register if its use would be likely to be deceptive or cause confusion.

This would usually be because of some meaning or implication the trade mark has in relation to the plant or plant related material being claimed. For example, if the name of a plant is used on a different but similar variety of plant, this would be likely to cause confusion.

(For more details, see Section 43 of the Trade Marks Act 1995)

Your trade mark is ZIMA.  This is the name of a particular plant of the genus SOLANUM LYCOPERSICON [sic]. If this was used on plants or plant material of other members of this genus it would be misleading to buyers of your goods and would cause confusion in the marketplace.

3.     The Applicant provided submissions in rebuttal as well as formal evidence of use but the examiner maintained the grounds for rejection for a further two reports.  After receipt of the third official report the Applicant requested a hearing.

4.     As a delegate of the Registrar of Trade Marks I heard the Applicant’s representatives in Melbourne on 12 September 2013.  The Applicant was represented by Mr Ed Heerey of counsel, instructed by Peter Ryan, trade marks attorney of Allens Patent & Trade Marks Attorneys.

Discussion and reasons

5.     Both of the grounds of rejection raised and maintained by the examiner are based on the presumption that the word ZIMA is the name of a particular variety of tomato plant.  The Applicant disputes this claim, and at the hearing argued that the examiner had not approached the examination of the Trade Mark appropriately resulting in an incorrect assessment of the registrability of the Trade Mark.  I will refer to the Applicant’s written arguments and the evidence filed during the examination process as well as to the oral submissions delivered during the hearing, as appropriate, during this discussion.   

Grounds for rejection – section 41

6. Section 41 of the Act was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which came into effect on 15 April 2013. Since the filing date of the Trade Mark predates the amendment to section 41, it is the version of the section in place at the time of filing which applies to this matter.[2] 

[2] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50

7. Section 41 in its un-amended form provides:

(1)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant. 

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(2)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons. 

Note:  For goods of a person and services of a person see section 6.

(3)  In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)  Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)  If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services: 

(a) the Registrar is to consider whether, because of the combined effect of the following: 

(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii) the use, or intended use, of the trade mark by the applicant;

(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and 

(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services-the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services - the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

Note 1: For goods of a person and services of a person see section 6.

Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6)  If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply: 

(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant-the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b) in any other case-the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1: Trade marks that are not to any extent inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate: 

(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b) the time of production of goods or of the rendering of services.

Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

8. Fundamental to the whole question under consideration is the definition of what a trade mark is. Section 17 of the Act defines the term as follows:

What is a trade mark?

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Note:  For sign see section 6

9. The nature and operation of section 41 were discussed by Branson J in the Oregon decision,[3] where she said (in part):

Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered ("the designated goods or services"). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the Registrar to conclude:

(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

[3] Blount Inc v Registrar of Trade Marks [1998] 40 IPR 498

10.     The essential or primary function of a trade mark is to act as an indication of the trade source of the goods in relation to which the sign is to be used.[4] Therefore the first consideration for a delegate of the Registrar in considering the Trade Mark under the provisions of section 41 must be an analysis of the extent of its inherent adaptation to distinguish the Applicant’s goods from the similar goods of other traders.

[4] See E & J Gallo Winery v Lion Nathan (Aust) Pty Ltd (2010) 241 CLR 144; 84 ALJR 352; [2010] HCA 15 at [41] – [43] (HCA).

Inherent adaptation to distinguish

11.     After making reference to Branson J’s decision in Oregon, at the hearing Mr Heerey submitted that the analysis of the Trade Mark for the purposes of section 41 is a two-stage process. He said that section 41(3) specifies that “the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. It is only if the delegate is then “still unable to decide” that question (section 41(4)) that the delegate should move on to consideration of other material such as evidence of use.

12.     Mr Heerey submitted that the examiner had not undertaken the two-stage process appropriately but had jumped straight to a consideration of the Applicant’s use of the Trade Mark.  He submitted that the Trade Mark was an invented word coined by the Applicant in 2010 as “a fun and whimsical name” for a range of golden grape tomatoes and that it has no inherent meaning let alone any inherent descriptive meaning.  He submitted that the correct approach to the consideration of the Trade Mark involves no reference to the Applicant’s actual use of the word but:

a consideration of the ordinary inherent signification conveyed by ZIMA – is it a word “forming part of the common heritage” which other traders would want to use in good faith to describe their own tomatoes?

13.     I have no argument with Mr Heerey’s comments about the two-stage process for assessing an application.  The Oregon decision makes it clear that an assessment under section 41 requires the two-stage process to be undertaken. However, the decision as to how much inherent adaptation to distinguish a trade mark has cannot be made in a vacuum. The trade mark has to be considered in relation to the goods concerned, and to do this it is essential to investigate the word both in its broadest sense and as it appears in its relevant market.

14.     Prior to the advent of Internet searching, that investigation involved looking at dictionaries, books and publications in fields relevant to the goods and services to which the Trade Mark was to be applied.  Searching via the Internet arguably provides more recent and up to date information than could be obtained from paper publications, but I am well aware that the provenance and accuracy of some of the information available may be unknown or dubious.  ‘Hits’ on the Internet can also point to how a claimed trade mark is perceived in a particular market as well as how its owner uses it and refers to it.  It can also alert a delegate to generic meanings of the word, and to use by other parties in markets other than the Australian market.  All of this information forms a part of the picture which enables the delegate to reach satisfaction about the amount of inherent adaptation to distinguish present in the claimed trade mark.

15.     In this instance, via research on the Internet, I found that the word ZIMA means ‘winter’ in a number of Slavic languages.  I also found that it is recorded on the UPOV[5] plant varieties rights database as the registered variety name of a lettuce plant and as a part of the registered variety name of a member of the broad cabbage family, both varieties being registered by Russian plant breeders.  Apart from the word as a reference to a kind of beer originally produced in the USA and no longer, as far as I can see, in production, most other references in the Internet results were to the Applicant’s tomatoes.

[5] UPOV is the acronym for the International Union for the Protection of New Varieties of Plants, an intergovernmental organisation with its headquarters in Geneva.  UPOV was established by the International Convention for the Protection of New Varieties of Plants which was adopted in Paris in 1961 and was revised in 1972, 1978 and 1991.  Its mission is to provide and promote an effective system of plant variety protection, with the aim of encouraging the development of new varieties of plants, for the benefit of society.  Both Australia and the USA are members of UPOV (the 1991 convention) and are thus bound by that Convention.  Information about UPOV and the Convention can be found on its website at In the Internet hits, the Applicant itself and various other commentators clearly indicate that the word ZIMA is referring to a new kind of tomato fruit.  Many of the comments refer to the word ZIMA in the singular, which infers that it is meant to be applied to a particular tomato, rather than to a range of tomatoes as is claimed in the Applicant’s evidence.  Some relevant examples are as follows – I have included dates for the comments where they were available and the emphases are mine:

·     10/13/2010 - Mastronardi Produce plans to introduce Zima, an orange grape tomato, at the Produce Marketing Association Fresh Summit in Orlando. Zima is a sweet grape tomato variety that took honors at the Leamington’s fourth annual Who’s the Hottest Tomato Competition in June.  [6] The two-piece pint clamshell package features a label that peels back, allowing consumers to wash the tomatoes and shake them out of the top, said Nancy Pickersgill, marketing coordinator for the Kingsville, Ontario, greenhouse company. “The focus on Zima is that it is a super-sweet grape tomato and the packaging is a unique two piece clamshell,” she said.

·     Thursday, January 12th, 2012 - Paul Mastronardi, President of Mastronardi Produce, joins us on today's episode of Behind the Greens. Mastronardi's Sunset brand includes tomatoes, peppers, cucumbers and specialty vegetables, but the focus today is firmly on the Zima tomato. Introduced last year, the Zima has already been named as the industry’s “Best Overall” and the “People’s Choice” award winner.[7]

·     Mastronardi will be showcasing all its greenhouse gourmet vegetables and focusing on its “Sunset” branded peppers, cucumbers and numerous tomato varieties. “We continue to showcase our Zima grape tomato, the most flavorful tomato available that has gained us several awards,” said Ms. Pickersgill. “Most recently, the Zima won three awards at the Hottest Tomato Competition: People’s Choice Award, Best Overall Tomato and Best Hothouse Bite-size Tomato. As of this moment, the Zima tomato has won seven awards since being introduced only last fall.”  Ms. Pickersgill said that the Zima is best sampled fresh.[8]

·     Thursday, June 23, 2011 at 12:14PM EDT - Kingsville, ON – Mastronardi Produce/SUNSET® took top honors at the 2011 Hottest Tomato Competition once again. For the fourth year in a row, Mastronardi takes the lead by bringing home five (5) out of eight (8) awards in the very important Tomato category. The win confirms the focus that Mastronardi Produce puts on its continuous development of flavorful tomatoes such as Zima™ -the seriously sweet tomato™ and Delano™ the exciting new flavorful TOV.[9]

·     04/18/2012 - Ontario-based Mastronardi Produce Ltd.’s new Angel Sweet grape tomato variety is the sweetest they offer. Packed in the same wash and go dry pint as the company’s popular Zima tomato, the Angel Sweet features eye-catching bright green and blue packaging that will stand out in the tomato category, says salesman Joe Canzoneri.[10]              

[6] In the face of this information, as an initial assessment of the Trade Mark, I am satisfied that the word ZIMA appears to be a reference to a single kind of tomato plant and its fruit. The 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 Applicant’s use in this fashion dates from before the priority date of the application, and continues up to the present. The Trade Mark therefore lacks any inherent adaptation to distinguish the Applicant’s tomatoes as it appears to be an appropriate description of the goods in respect of which it is to be used. The provisions of section 41(6) thus apply to the Trade Mark.

18. The onus thus moves to the Applicant to provide further information which may enable me to ‘decide the question’ (section 41(4)). As it is section 41(6) that I consider applies to the Trade Mark, the Applicant needs to provide evidence of use which demonstrates that at the filing date, the Trade Mark did distinguish the Applicant’s goods from those of other traders.

The Applicant’s evidence

1. The evidence provided by the Applicant consists of the Statutory Declaration of Paul Mastronardi, President of the Applicant.  The declaration was made on 24 May 2013 and includes Exhibits PM-1 to PM-5.

   20.     Mr Mastronardi states that the applicant began growing vegetables in Leamington, Ontario, Canada in the 1920s and that it was the pioneer of building commercial greenhouses in North America in the 1940s.  He says that for more than 60 years the Applicant has developed internationally recognised brands and that it is known for its extensive production of greenhouse tomatoes, peppers and cucumbers.  He states that the Trade Mark is a term coined by the Applicant in 2010 and that the word ZIMA has not been “deemed a tomato variety in Australia, Canada, the United States, Japan or New Zealand or anywhere in the world”.

   21.     Mr Mastronardi then goes on to describe how the tomatoes bearing the Trade Mark are produced by the applicant (or its licensees) and I quote some of the information provided below:[11]

   [11] Mr Mastronardi has specified that the information contained within the Statutory Declaration is of a commercially sensitive nature.  I have therefore restricted the amount of specific detail in the information I have quoted and I have substituted my own codes for specific information which is provided in the evidence such as the names of the seed suppliers and the seed supplier’s identification codes for their seeds.

   (a)The Applicant contracts with a seed supplier (Seed Supplier) to provide seeds to the Applicant for the purpose of the applicant producing a particular type of golden grape tomato;

   (b)The Applicant contracts with various Seed Suppliers throughout the world …

   (c)The Seed Supplier assigns a code name to the particular seed, which will usually be an alpha numeric code.  That particular code is used by the Seed Supplier to identify the particular seed.  The seed will determine the particular variety of golden grape tomato it will produce.

   (d)Now shown to me and attached as Exhibit PM-3 are copies of the following:

   (i)Seed packets supplied to the Applicant from [a Seed Supplier] which refer to the following alpha numeric codes for the seeds contained in the respective seed packets

   (A)    [X2x F1]

   (B)    [A3c]

   (C)   [A3c F1] and

   (D)   [F5h].

   (ii)…

   (e)The particular variety of golden grape tomato produced by the Applicant (or its licensees) will depend upon the type of seed.  For example, the following varieties of golden grape tomatoes are produced by the Applicant depending upon the seed provided by the respective Seed Supplier:

   (i)The [X2x F1] seed produces one variety of golden grape tomato;

   (ii)The [A3c] seed produces another variety of golden grape tomato;

   (iii)The [A3c F1] seed produces another variety of golden grape tomato; and

   (iv)The [F5h] seed produces a further variety of golden grape tomato.  

   (f)Once the particular golden grape tomato variety is grown and harvested by the Applicant (or its licensees), it is at that stage that the Applicant (or its licensees) applies the ZIMA Trade Mark to those tomatoes.  …  All four seeds referred to in [the preceding paragraphs] are used by the Applicant (or its licensees) to produce golden grape tomatoes which the Applicant sells under the ZIMA Trade Mark.

   22.     The declaration provides, at Exhibit PM-4, examples of various packaging materials bearing the Trade Mark, some of are shown below:

   23.     Mr Mastronardi says it is also the applicant’s intention that in the future it will produce other different golden grape tomato varieties which will be sold under the Trade Mark.  He further states that in view of the information he has provided in the declaration and especially those steps outlined in the quotations above that the Applicant is educating the buying public “that ZIMA is a reference to a particular brand name, and not a reference to a particular tomato variety”.

   24.     The evidence of use the Applicant has provided contends that the Trade Mark is not the name of a single variety of tomato but is a trade mark or brand designed to be used in respect of a range of different varieties of golden grape tomatoes.  Both Mr Mastronardi in his evidence and Mr Heerey at the hearing have put emphasis on the fact that the Trade Mark is not registered as a variety under plant breeder’s rights legislation in any country, let alone in Australia, as an argument to counter the examiner’s assessment (as well as my own initial assessment) of its status as the name of a tomato variety.  Mr Heerey also submitted the following:

   [T]he evidence demonstrates that the applicant has used ZIMA to describe its own particular brand of sweet golden grape tomatoes packaged in a unique two piece clamshell with a re-sealable top.  Insofar as the applicant’s marketing materials use the term “new variety”, this was clearly a reference to the product as a whole, including its unique packaging.  Such marketing terminology should not be quoted out of context to identify a new plant variety in the scientific sense.  Certainly, there 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.

   25.     The term ‘variety’ is a loaded term in the markets for most kinds of plants and including in the markets for fruit and vegetables.  It has its genesis as a technical term in botanical nomenclature referring to ‘a taxonomic rank below that of species’.  In common parlance this definition has been somewhat overtaken by use of the term to refer to cultivated varieties (often referred to as ‘cultivars’).[12]  Since the advent of plant breeder’s rights legislation in various parts of the world, ‘variety’ has a legal meaning as well as its common meanings.  ‘Variety’ is defined in Chapter 1, Article 1 of the UPOV Convention as:

   (vi)"variety" means a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a breeder's right are fully met, can be

   •defined by the expression of the characteristics resulting from a given genotype or combination of genotypes,

   •distinguished from any other plant grouping by the expression of at least one of the said characteristics and

   •considered as a unit with regard to its suitability for being propagated unchanged.

   [12] A ‘cultivar’ generally refers to a plant or grouping of plants selected for desirable characteristics and that can be maintained by propagation.  Many popular ornamental garden plants such as roses, camellias and azaleas are ‘cultivars’ produced by careful breeding and selection for flower colour and form.  Most agricultural food crops are almost exclusively cultivars which have been selected for characteristics such as improved yield, flavour and resistance to disease. (Adapted from a Wikipedia entry.)

   26.     It is clear from the Applicant’s evidence that the Trade Mark is to be (and has been) used in respect of the fruit of at least one cultivated variety of tomato.  I do not consider it to be significant that these tomatoes are to be presented for sale in a particular kind of plastic container – the word ZIMA is taken by purchasers to refer to the fruit itself.  This is clear from the marketing materials and the comments from purchasers to which I have had access.  I do not agree with Mr Heerey that the Applicant’s use of the word ‘variety’ occurring in its evidence is clearly a reference to the fruit in its package, rather than to the fruit itself.

   27. Neither do I agree that the Applicant’s explanation of the methods it uses for growing its tomatoes (refer to paragraph 21 to 23 of this decision) serves to educate the public that the Trade Mark is a brand name, rather than a variety name. Mr Mastronardi has declared that the information in his Statutory Declaration is commercially sensitive, and therefore the public is unlikely to be party to the fact that certain seeds from a number of seed suppliers are used to produce the fruit. The buying public is unlikely to be aware that these seeds are claimed to be of different cultivars of orange grape tomatoes,[13] and thus that the fruit within the packages may be fruits of different kinds of tomato plants. I can see nothing in the evidence that suggests that the Applicant is actively promoting the Trade Mark as a brand for a range of different tomato fruits, and by default it appears to me (and to the public) as a single cultivated variety of tomato.

   [13] It is not at all clear just what varieties of tomato the seed codes refer to.  The Applicant states that they refer to different varieties, but has not identified these varieties in any way, nor has it explained the method of generation of the codes. 

   28.     In the face of the evidence the Applicant has provided, I find that it has not satisfied me that the Trade Mark is acting as such for the Applicant’s goods, nor that it is already distinguishing the Applicant’s tomatoes from the same or similar tomatoes grown by other producers.  I consider that, despite its arguments to the contrary, the evidence demonstrates that the Applicant 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.[14] I find that the manner in which the Applicant brands its packaging serves to strengthen this view, as the tomatoes are distributed in boxes which clearly carry the Applicant’s SUNSET trade mark (see images at paragraph 22 of this decision) and there is no information provided upon the packaging to suggest that the situation is otherwise. I am satisfied that the provisions of section 41(6) continue to apply to the Trade Mark because it is the name of the goods which the Applicant markets. The Applicant has thus failed to overcome the section 41 ground for rejection.

   [14] See ReApplication by Strauss (1999) 47 IPR 191, referred to in Re Institute for Inner Studies Inc (2010) 85 IPR 658.

   Section 43 – trade mark likely to deceive or cause confusion

   29. Section 43 provides:

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

   30. Section 43 requires that there be a connotation within the Trade Mark, that is, a secondary meaning within the Trade Mark, which is likely to cause deception or confusion if it were to be used in respect of the goods of interest to the Applicant.

   31.     In this instance, the publically available evidence demonstrates that the Trade Mark is used by the Applicant to describe a variety of golden grape tomato.  It is clear that the buying public likewise views the Trade Mark as a reference to a variety of golden grape tomato.  Therefore the secondary meaning within the Trade Mark is that of a particular variety of golden grape tomato.  If the Trade Mark is applied to other tomatoes which are not of this variety, then the buying public is likely to be deceived or confused about the true nature of the tomatoes they are buying.  I am satisfied that the ground of rejection is appropriate to the case in hand, and must be maintained. 

   Decision

   32.     I am satisfied that the Trade Mark is the name of a cultivated variety of tomato and it is not adapted to distinguish the Applicant’s tomatoes from the similar goods of other traders.  Similarly, I am satisfied that its use in respect of tomatoes not of the specific cultivated variety is likely to cause deception or confusion.  I reject application 1438732.

   Alison Windsor
   Hearing Officer
   Trade Marks Hearings
   23 October 2013