Mastronardi Produce Ltd v Registrar of Trade Marks

Federal Court of Australia|2014-09-19|Before: Gordon J

The appeal be allowed.
The decision of the delegate of the Respondent made on 23 October 2013 rejecting trade mark application no 1438732 be reversed.
The trade mark the subject of trade mark application 1438732 be registered.
The Respondent pay the Appellant's costs of this proceeding and of the hearing before the Registrar's delegate. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011 (Cth).

IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 1173 of 2013

A. INTRODUCTION 1 The Appellant's (Mastronardi) application for a trade mark for the word ZIMA in class 31 for tomatoes (the Trade Mark) was rejected by a delegate of the Respondent. The delegate found (at [17]) that "the word ZIMA appears to be a reference to a single kind of tomato plant and its fruit" and that the trade mark "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". Mastronardi appeals under s 35(b) of the Trade Marks Act 1995 (Cth) (the TMA). Mastronardi contends ZIMA does not refer to a variety of tomato but is a newly coined word inherently adapted to distinguish its tomatoes from those of other traders. 2 For the reasons that follow, the delegate's decision is reversed and the Trade Mark should be registered. The Respondent is to pay Mastronardi's costs of this proceeding and of the hearing before the Respondent's delegate. 3 This judgment will consider the facts, the basis of the appeal, the statutory framework, identify the issue to be determined and then turn to apply that statutory framework to the facts.

B. FACTS 4 Mastronardi is a Canadian company engaged in the greenhouse production and wholesale of fruit and vegetables, including tomatoes. In some cases, Mastronardi supplies seeds to licensees to grow the relevant product and market it under a licensed trade mark. 5 In early 2010, Mastronardi's President, Mr Paul Mastronardi, coined the name ZIMA to be applied to a range of golden grape tomatoes. It is not in dispute that, at that time, the word ZIMA had no meaning as a word of the English language, nor had it ever been used in any way in respect of tomatoes in Australia or elsewhere. It is also not in dispute that ZIMA has never been included in any English language dictionary or other reference book which might reflect that the word has any inherent meaning which has any connection to tomatoes. 6 On 25 July 2011, Mastronardi applied to register ZIMA as a trade mark in Australia in class 31 for tomatoes (having earlier applied to register that mark in Canada and elsewhere). Class 31 encompasses the following kinds of goods: "grains and agricultural, horticultural and forestry products…; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; …". ZIMA has been registered in Canada with effect from 26 April 2010, the United States with effect from 30 July 2010, Japan with effect from 27 July 2011 and New Zealand with effect from 3 August 2011. 7 No ZIMA tomatoes were sold in Australia until October 2013. 8 On 23 October 2013, Mastronardi's trade mark application no 1438732 was rejected by the Respondent's delegate. As noted earlier, the delegate found that "the word ZIMA appears to be a reference to a single kind of tomato plant and its fruit" and that the trade mark "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". On 14 November 2014, Mastronardi filed its notice of appeal in this proceeding.

C. BASIS OF APPEAL 9 Mastronardi appeals under s 35(b) of the TMA. The appeal is an appeal de novo and the Court conducts a rehearing of the matter in its original jurisdiction: Nexans S.A. v Nex 1 Technologies Co. Ltd [2012] FCA 180 at [8]. In particular, as noted in Nexans, the Court is guided by the following principles: 1. The Court must approach the matter afresh without undue concern for the ratio decidendi of the Registrar; 2. The provisions of s 197 of the TMA, which allows the taking of further evidence, make it plain that in exercising its jurisdiction the Court is to determine the question of acceptance of the application on its merits; 3. There is no presumption in favour of the correctness of the Registrar's decision save that weight will be given to the Registrar's opinion as that of a skilled and experienced person; and 4. The Court is required to apply the same legal criteria as the Registrar is required to adopt.

D. STATUTORY FRAMEWORK 10 Section 17 of the TMA provides that a "trade mark is a sign used, or intended to be used, to distinguish goods … dealt with or provided in the course of trade by a person from goods … so dealt with or provided by any other person" (original emphasis). 11 The statutory framework for registration of trade marks was recently summarised by the Full Court in Modena Trading Pty Ltd v Cantarella Bros Pty Ltd (2013) 215 FCR 16 at [52]-[56]. For present purposes, it is sufficient to refer to the following: 52. Under s 27 of the Act, a person may apply for the registration of a trade mark in respect of goods if the person claims to be the owner of the trade mark and the person is using, or intends to use, the trade mark in relation to the goods. Under s 31, the Registrar of Trade Marks (the Registrar) must examine and report on whether the application has been made in accordance with the Act and whether there are grounds for rejecting it. Under s 33, the Registrar must, after the examination, accept the application, unless satisfied that the application has not been made in accordance with the Act or that there are grounds for rejecting the application. 53. Under s 41(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 in respect of which the trade mark is sought to be registered (designated goods) from the goods of other persons. Under s 41(3), in deciding that question, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods from the goods of other persons. … … 56. Sections 41(3) to (6) is, in effect, a code directed to how s 41(2) is applied: Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 56-7, affirmed in Time Warner Entertainment Company LP v Stepsam Investments Pty Ltd (2003) 134 FCR 51 at [26]. (This decision was the subject of a grant of special leave to the High Court. The appeal has been heard. The decision is reserved.) 12 When the application was filed (25 July 2011), s 41 entitled "Trade mark not distinguishing applicant's goods or services", relevantly provided: … (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 … in respect of which the trade mark is sought to be registered (designated goods …) from the goods … 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 … from the goods … 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 … from the goods … 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 … from the goods … of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods … : (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 … ; (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 … 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 …- the trade mark is taken to be capable of distinguishing the applicant's goods … from the goods … of other persons; and (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods … the trade mark is taken not to be capable of distinguishing the applicant's goods … from the goods … of other persons. … (6) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods … from the goods … 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 … as being those of the applicant - the trade mark is taken to be capable of distinguishing the designated goods … from the goods … of other persons; (b) in any other case - the trade mark is taken not to be capable of distinguishing the designated goods … from the goods … of other persons. Note 1: Trade marks that are not inherently adapted to distinguish goods … 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 (b) the time of production of goods … . … (Original emphasis.) 13 The parties agree that s 41 of the TMA requires a two-stage analysis. First, the Court must consider the question of inherent adaption to distinguish under s 41(3). ZIMA is presumed to be sufficiently "inherently adapted to distinguish" under s 41(3) unless the Court is satisfied otherwise on the balance of probabilities: Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60 at [21]; Mantra IP Pty Ltd v Spagnuolo (2012) 205 FCR 241 at [32]-[34]. It is only if the Court is still unable to decide that question that the analysis proceeds to the second stage under ss 41 (4), (5) and (6): Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 56-7; Chocolaterie Guylian at [9]; Mantra IP at [23]; Modena Trading at [53]-[56]. 14 The test for assessing whether a trade mark is "inherently adapted to distinguish" for the purposes of s 41(3) was articulated by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514, where his Honour referred to the words of Lord Parker of Waddington in Registrar of Trade Marks v W. & G. Du Cros Ltd [1913] AC 624: "The applicant's chance of success in this respect [i.e. in distinguishing his goods by means of the mark, apart from the effects of registration] must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. …" 15 Justice Kitto continued: [T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it. 16 Any acquired distinctiveness resulting from use of the trade mark is irrelevant to considering the "inherent fitness of the mark for the purpose of distinguishing the applicant's goods from those of other persons": Clark Equipment at 513. This idea was explained further by Gibbs J in Burger King Corp v Registrar of Trade Marks (1973) 128 CLR 417 at 424: Inherent adaptability is something which depends on the nature of the trade mark itself … and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise. (Emphasis added.) See also Chancellor, Masters and Scholars of the University of Oxford (Trading as Oxford University Press) v Registrar of Trade Marks (1990) 24 FCR 1 at 7; Unilever Australia Ltd v Societe Des Produits Nestlé SA (2006) 154 FCR 165 at [35]; Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494 at [84]; and Mantra IP at [42] and [52]. 17 What then makes a mark "inherently adapted to distinguish"? Each case must be considered and determined on its own facts. Earlier authorities have explained the issue or identified the relevant considerations in a number of ways. 18 "An inherent capacity is an "essential permanent characteristic" and "intrinsic" to the trade mark": Unilever at [28]-[30] and [54]. The distinction between inherent adaptation to distinguish and an adaptation to distinguish acquired through use is important. The latter is irrelevant under s 41(3). Lindgren J in Kenman Kandy at [84] described it in these terms: While inherent adaptation to distinguish requires attention to be focused on the mark itself, and is intended to stand in sharp contrast to a mark's capacity to distinguish arising from use, the notion of "the mark itself" does not exclude from consideration the nature of the range of goods within the class or classes in respect of which registration is sought, or the various ways in which the mark might, within the terms of the registration, be used in relation to those goods. Indeed, those matters must be taken into account. … Whether the [mark] is inherently adapted to distinguish can be tested by assessing how it would be perceived and understood by members of the public seeing [the good bearing the mark] for the first time, because this test excludes the possibility of a trade mark significance arising from use. (Emphasis added.) 19 The applicable principles were summarised recently by Reeves J in Mantra IP at [52]: … [R]egard must be had to the presumption of registrability in s 33 of the Act. The assessment under s 41(3) looks to the mark itself and its inherent nature; it does not take into account the effect of use; it considers how the mark would be understood by ordinary Australians seeing it for the first time. The question can be tested by asking whether other traders trading in services of the same or a similar kind and only actuated by proper motives are likely to want to use the mark in connection with the same or similar services. A proper motive is one founded on the "common right of the public to make honest use of words forming part of the common heritage". Signs that are descriptive in nature, or use a geographical name, form part of the "common heritage" and, therefore, cannot usually be inherently distinctive. This test is to be applied negatively, not positively and the assessment is to involve a "practical evaluative judgment ... in the real world". (Emphasis added.) 20 The TMA precludes registration of a trade mark which would grant a person "a monopoly in what others may legitimately desire to use": Kenman Kandy per Stone J at [145] citing W & G Du Cros at 635. Accordingly, words (ordinary or technical) which are descriptive of the character or quality of the goods are not inherently adapted to distinguish: Kenman Kandy at [144] and the authorities cited. Why? Because "the words have significations or associations that invite confusion and because registration of a trade mark using such words would preclude the use by others whose goods have similar qualities": Kenman Kandy at [145]. 21 That leads us to invented words. "It is the absence of association and signification that accounts for invented words often being found to be inherently adapted to distinguish a trader's product": Kenman Kandy at [148], as well as at [147]-[156] and the authorities cited. 22 As the learned authors of Shanahan's Australian Law of Trade Marks and Passing Off (5th ed, Thomson Reuters (Professional) Australia Limited, 2012), Mark Davison and Ian Horak stated at [20.545]: Newly coined or invented words stand outside the common stock of language from which other traders must be entitled to choose their descriptions. Indeed, it could be said that all invented words are "capable of distinguishing" and "inherently adapted to distinguish" because they are not part of the English language and therefore other traders could not need, without improper motive, to use them. As Lord Herschell put it in Eastman Photographic Materials Co Ltd's Application [(1898) 15 RPC 476 (HL)] "an invented word is allowed to be registered as a trade mark, not as a reward of merit, but because its registration deprives no member of the community of the rights he possesses to use the existing vocabulary as he pleases". The fact that a word does or does not appear in a dictionary [NationsBank Corp's Application (1998) 45 IPR 345; Re Application by AG-ID Pty Ltd (2005) 68 IPR 153] or was not known before the applicant adopted it [Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1; Zeneca Ltd v Sanonda (Aust) Pty Ltd (1998) 41 IPR 587; Babcock & Wilcox Co's Application (1998) 41 IPR 147] does not determine whether it is capable of distinguishing. … (Original emphasis.) There is of course a qualification. An invented word will not be acceptable unless it conveys no meaning, at least to "ordinary Australians": Kenman Kandy at [152] and the authorities cited.

E. ISSUE 23 The issue may be simply stated - is ZIMA "inherently adapted to distinguish" Mastronardi's tomatoes from the tomatoes of other traders, so that it would be registrable under s 41(3) of the TMA as it stood as at 25 July 2011 (the date of application for registration)? 24 In the present appeal, that consideration may be answered by asking two questions: (1) how would ZIMA be understood as at 25 July 2011 by ordinary Australians seeing it for the first time used in respect of tomatoes; and (2) how likely is it that other persons, trading in tomatoes and being actuated only by proper motives, will think of the word ZIMA and want to use it in connexion with tomatoes in any manner which would infringe a registered trade mark granted in respect of it?

(1) First question 25 ZIMA is an invented word, coined in early 2010 by Mr Mastronardi. There is no dispute that at that time ZIMA had no relevant meaning as a word of the English language and had never been used in respect of tomatoes. Indeed, ZIMA has never been included in any English language dictionary or other reference book which might reflect that the word has any inherent meaning which has any connection to tomatoes. That remained the position as at 25 July 2011. At that time, the word ZIMA could not and did not convey any obvious meaning to ordinary Australians.

(2) Second question 26 It follows that the registration of the word ZIMA as a trade mark would not infringe upon the "common heritage" in the sense that "[t]he vocabulary of the English language is common property: it belongs alike to all; [but] no one ought to be permitted to prevent the other members of the community from using for purposes of description a word which has reference to the character or quality of goods": see Mark Foy's Limited v Davies Coop & Co Ltd (1956) 95 CLR 190 at 199, referring to the speech of Lord Herschell in Eastman Photographic Materials Co. Ltd v Comptroller-General of Patents, Designs and Trade Marks [1898] AC 571 at 580. 27 Was ZIMA descriptive of the character or quality of the tomatoes produced by Mastronardi? Or, as the delegate put it (at [26] of her decision), was the word ZIMA taken by members of the public to refer to the fruit itself? Put another way, how likely is it that other persons, trading in tomatoes and being actuated only by proper motives, will think of the word ZIMA and want to use it in connection with tomatoes in any manner which would infringe a registered trade mark granted in respect of it?

Respondent's position 28 The Respondent contended that Mastronardi intends to use ZIMA to distinguish its particular kind of tomatoes from other kinds of tomatoes and not as a trade mark to distinguish its tomatoes from those of other traders. As a result, the Respondent submitted that ZIMA was not inherently adapted to distinguish the tomatoes of Mastronardi from tomatoes of the same kind of another trader as it is the name of a new variety of tomatoes. In particular, the Respondent submitted it was "intended for use to distinguish one variety of tomato introduced by [Mastronardi] from the generality of tomatoes". 29 The Respondent submitted that the history of trade mark law seeks to protect the interests of strangers, the public and other traders from a monopoly being granted in words that others may legitimately desire to use: citing du Cros; Clark Equipment at 514; Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300 at 310; and Thomson v B Seppelt & Sons Ltd (1925) 37 CLR 305 at 312. In this case, the Respondent contended that the word (ZIMA) describes the goods (the tomatoes) as it is the name of a new variety of tomato and is likely to be required for use by other traders without improper motives. 30 The Respondent further submitted that in this case there was a "factual monopoly" because Mastronardi is the controller of seeds that come to be grown by its licensee in Australia, and that names given to newly invented products, or products the subject of a monopoly, are a relevant class or category of descriptive words. In support of that contention, the Respondent placed considerable reliance on Wheatcroft Brothers Limited's Trade Marks [1954] Ch 210 which concerned a new variety of rose. After explaining the method by which a new rose variety is created, Lloyd-Jacob J said at 220-21: In light of the evidence before me, it is clear that at the respective dates of application for each of these marks, the Respondents intended only to use each mark in relation to one variety of rose, which variety as they well knew and intended either was or would be characterised by the same name recorded in the register of the [Rose] Society. … An intention to use the mark as the name of a variety appears to be wholly inconsistent with a bona fide intention to use it as signifying a connection in the course of trade with the supplier, for which purpose it must necessarily be capable of differentiating between examples of the same variety coming from differing trade sources. If the question be posed: - Was the name intended for use to distinguish rose trees of the Respondents' growing from rose trees of the same variety grown by others, or was it intended for use to distinguish one variety introduced by the Respondents from the generality of roses? - there can be only one answer, for the inevitable consequence of registration with the Society was to give the name a variety status. (Emphasis added.) 31 In support of these contentions, the Respondent contended that the following "background factors" were relevant: (a) nature of the range of goods within the class in respect of which registration is sought; (b) knowledge and practice in the trade; (c) ways in which the mark might be used in relation to the goods (tomatoes); (d) manner in which the goods are marketed; and (e) prior use of the mark overseas, and subsequent use in Australia, as a variety name.

Mastronardi's position 32 Mastronardi maintained that ZIMA was not the name of a new variety of tomato. Mr Mastronardi gave evidence to the effect that he knows of about 50 different cultivars for orange grape tomatoes, but there could be more that seed companies have not shared with him. 33 Mastronardi engaged Dr Geoffrey Ashburner to provide expert evidence in this proceeding. From 1998 to 2003, Dr Ashburner worked as a Senior Vegetable Research Officer at Agriculture Victoria in Tatura. In that role, his duties involved breeding and evaluating tomato varieties for the fresh market and the processing market. Dr Ashburner's role required him to have a detailed knowledge of the methods for developing and evaluating tomato varieties, and how tomatoes are processed, packaged and promoted both for the processing market and also for the fresh market (that is, the sale of tomatoes, both loose and packaged, to the public). Since 2010, Dr Ashburner has been a Consultant at El Xix Agricultural and Rural R&D in Murchison, where he implements and manages an independent fresh tomato breeding program. As part of that role, Dr Ashburner is required to have knowledge of tomato breeding, the identification and naming of tomato varieties and to understand the tomato market generally, including the retail market. Dr Ashburner is also currently a Technical Manager at Avonlea Flowers and River Road Seedlings. 34 Dr Ashburner gave unchallenged evidence that the word ZIMA does not refer to - and is not used by, suppliers, retailers and consumers as - a variety of tomato.

Consideration 35 It was common ground that fresh tomatoes are sold to the public in supermarkets or through separate greengrocers and that they are generally sold loosely or packaged. Are they sold by reference to a particular "variety"? "Variety" does not have one meaning. It is a loose term that is used without precision. As at 25 July 2011, in a botanical context, "variety" meant a specific cultivar. In the fresh foods industry and at a retail level, the position is different. There is no common meaning of the word "variety". 36 The unchallenged evidence of Mr Michael Simonetta, the Chief Executive Officer of Mastronardi's exclusive licensee to sell ZIMA tomatoes in Australia, was that: In the case of tomatoes, there are hundreds and even thousands of different varieties in Australia. … I am … aware that a small number of tomato varieties have been registered under the Plant Breeders Rights legislation in Australia. However that is extremely rare. Tomato plants - unlike with crops such as grapes - are not a permanent crop. Each year, at the end of the crop, the tomato plants are removed, and new plants (which can be new varieties) are grown there. … So in marketing and promoting tomatoes, they are identified by reference to trade marks and category names. Over time various category names for tomatoes have been developed and have come into common usage, although the use of the terms can be quite rubbery and can overlap. Some of the categories are cherry, truss, roma, baby roma, grape and cocktail. It is these general category names that are used as descriptors in the marketing and selling of tomatoes. 37 But that is not the end of the analysis. There are often a very large number of cultivars sold under a particular category name of tomato because they share some common characteristics - shape, size, colour, taste (sweetness on the Brix scale), squirt factor. In a packet of tomatoes, unless the name of the cultivar was on the packet, a customer would not know whether the tomatoes all came from the same cultivar. The customer would expect to get a tomato with particular characteristics. 38 The present appeal demonstrates these difficulties. It is concerned with golden grape tomatoes. Mastronardi contracts with seed suppliers throughout the world to provide it with seeds to produce a particular type of golden grape tomato. Each seed supplier assigns a name to a particular seed, usually an alpha numeric code. That code is used by the seed supplier to identify the particular seed. It is the seed which determines the particular variety of golden grape tomato that it will produce. As a result, the particular type of golden grape tomato produced by Mastronardi will depend upon the type of seed. At present, Mastronardi uses six different seeds to produce six varieties of golden grape tomato. In Australia, currently one seed is used to produce a variety of golden grape tomato while other varieties are being trialled. Once the golden grape tomato variety is grown and harvested by Mastronardi (or one of its licensees), Mastronardi (or one of its licensees) packages the tomatoes in enclosed packaging known as "clam shells" and applies the ZIMA trade mark to the tomatoes regardless of the seed used. Mastronardi uses "Sunset" and what was described as the "Sunset logo" as its house brand. The Sunset logo is applied by Mastronardi to the packaging of its produce as well as in its marketing materials, its website and on the exterior of factory buildings. 39 Mastronardi entered its ZIMA tomato in a tomato competition in June 2010. It won three awards. In October 2010, Mastronardi launched the ZIMA tomatoes at the Produce Marketing Association Fresh Summit held in Orlando, Florida (PMA Fresh Summit). The PMA Fresh Summit was a trade show attended by 10,000-15,000 people, including international visitors. Mastronardi had a stand at the PMA Fresh Summit where its produce was displayed. The launch was also publicised in other ways such as via a press release. 40 The Respondent contended that at the time of launching the ZIMA, Mastronardi referred to ZIMA as a variety of tomato and applied the word only to tomatoes that share the following characteristics - a golden colour, a grape shape, a small size and a sweet favour - and that it is irrelevant to the consumer whether the tomatoes with the shared characteristics are produced by one or more cultivars. 41 Finally, the Respondent contended that ZIMA is the name used by traders and consumers to describe tomatoes with the "ZIMA characteristics" because there is no other category or varietal name for consumers to use to describe these tomatoes. That contention is rejected. It is not supported by the evidence. 42 In the press release of 14 October 2010 which accompanied the launch at the PMA Fresh Summit, Mastronardi described the tomato in the following terms: [Mastronardi]; long known for bringing flavor to the tomato category will launch its newest variety at PMA's Fresh summit in Orlando this week. The ZIMATM … This golden orange grape snacking variety is a show stopper with many retailers and foodservice operators eager to carry it upon release. "This is the sweetest colored tomato in the marketplace and will be a refreshing color break on the red dominated tomato shelves for retailers" … (Emphasis added.) On other occasions, Mastronardi and its licensees referred to the tomatoes as "golden grape tomatoes", "sweet orange grape tomatoes" and "golden snacking tomatoes". 43 What is the relevance of this? Actual use of the trade mark does not assist in the resolution of the current matter as the inherent nature of the trade mark itself cannot be changed by use or otherwise: Burger King at 424. 44 In any event, other traders are not prevented from producing orange grape tomatoes as there are about 50 cultivars that will produce that type of tomato. Of the six cultivars presently used by Mastronardi, only two are supplied exclusively to Mastronardi. As can be seen from [42] above, there are a number of descriptors that other traders could find within the common heritage of the language to describe these tomatoes without having to use the word ZIMA. Dr Ashburner gave evidence that general terminology such as "golden snacking tomatoes" would be sufficient information for the supplier to provide to the consumer, and then the supplier can apply its own brand name to the product. This background context is relevant - it is part of the "practical evaluative judgment about the effects of the relevant mark in the real world": see, for example, Kenman Kandy at [47] and Chocolaterie Guylian at [54]. 45 It follows from the above that it is unlikely that other persons, trading in tomatoes and being actuated only by proper motives, will think of the word ZIMA and want to use it in connection with tomatoes in any manner which would infringe a registered trade mark granted in respect of it. 46 Here, Mastronardi sought to register a trade mark, the word ZIMA, to distinguish its goods (the tomatoes it sold) from the tomatoes of its trade rivals and to indicate the trade source (and consequently, quality) of its tomatoes. This is consistent with the meaning of "trade mark" in the TMA (see [10] above) and the essential functions of a trade mark as outlined in E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [42] and [43]. It is no answer to Mastronardi's claim to say only that the goods which it sells are different from the goods sold by its trade rivals. Indeed, the very purpose of Mastronardi seeking a trade mark for its goods is to distinguish its goods from the goods of others. 47 For the above reasons, ZIMA is inherently adapted to distinguish the Appellant's tomatoes from the tomatoes of other persons, so that it would be registrable under s 41(3) of the TMA as it stood at 25 July 2011.

Conclusion 48 For those reasons, the decision of the delegate of the Respondent is reversed. The Trade Mark should be registered. The Respondent is to pay Mastronardi's costs of this proceeding and of the hearing before the Respondent's delegate. I certify that the preceding forty-eight (48) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gordon.

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