Honey, I Lost the Trade Mark: MANUKA HONEY Declared not Exclusive to New Zealand
An attempt to trade mark the term MANUKA HONEY in New Zealand has come to a sticky end. Assistant Commissioner of Trade Marks Natasha Alley found that the term MANUKA HONEY was descriptive of the goods it claimed and MHAS had “fallen short of establishing the necessary distinctiveness, both inherent and acquired”.1
The “trans-Tasman tussle of extraordinary proportions” began on 18 August 2015, when an application to register MANUKA HONEY as a certification trade mark for honey (Manuka Mark)2 was filed by UMF Honey Association Incorporated. The Manuka Mark was subsequently assigned to the Mānuka Honey Appellation Society (MHAS), an entity incorporated in New Zealand for the purposes of protecting the term “Mānuka Honey”. The application was accepted for registration and opposed by the Australian Manuka Honey Association Limited (AHMA) on 27 August 2018.
What is a certification trade mark?
While a standard trade mark distinguishes the goods and services of a particular trader, a certification trade mark indicates that the goods and services meet a defined standard or carry a certain characteristic. A certification mark must be registered alongside a set of regulations to govern how the mark can be used. These regulations must specify what standards or characteristics goods and services are required to meet in order for the certification mark to be used, and detail the methodology used to verify whether those standards or characteristics are met.
The regulations proposed by MHAS to govern the use of the Manuka Mark would have required honey to meet two standards in order to be carry the Manuka Mark. The honey would need to be:
- Produced in New Zealand; and
- Have a certain composition, as a result of being produced from the nectar of the leptospermum scoparium plant. MHAS would prescribe the method for testing whether this composition was present.
AHMA submitted that if MANUKA HONEY was registered as a certification mark with these regulations, MHAS would become a de facto regulator of all manuka honey in New Zealand, setting standards which extended “beyond what is required by New Zealand law”.3
The Associate Commissioner held that the draft regulations governing use of the certification mark were not satisfactory, in addition to determining that the Manuka Mark did not satisfy the distinctiveness requirement and that use of the certification mark is likely to deceive, or at least confuse, a substantial number of consumers.4
Descriptive nature of MANUKA HONEY trade mark
The Associate Commissioner confirmed that the onus was on MHAS to establish that the Manuka Mark was distinctive of the relevant goods at the priority date of the Manuka Mark, namely 18 August 2015.5
The parties agreed that “mānuka” is a te reo Māori word (Māori language word) for the plant with the botanical name leptospermum scoparium. Despite its origins as a te reo Māori word, “manuka” (sans macron) was determined to be an English loanword, having been adopted into the English language to refer to the leptospermum scoparium plant from as early as 1849.6 The evidence also indicated the plant leptospermum scoparium was native to Australia as well as New Zealand, and mono-floral honey meeting the quality standards prescribed by New Zealand law for manuka honey could be produced in Australia. The term “manuka honey” was therefore entirely descriptive of honey derived from the leptospermum scoparium plant.7
In making this determination, the Assistant Commissioner expressed “sympathy” for MHAS as there “[did] not appear to have been widespread use of the term “manuka honey” by Australian honey producers until the New Zealand trade in mānuka honey took off”.8 However, there was clear use of the term in Australia at the priority date of the Manuka Mark. The Assistant Commissioner expressed that “savvy marketing by Australian honey producers does not equate to dishonest trading on their part”, and could not “justify registration of a purely descriptive word by MHAS as a certification mark in New Zealand”.9
Recognition of Māori intellectual property rights
MHAS submitted that the Manuka Mark ought to be considered as having acquired distinctiveness, due to the plant and the word mānuka being regarded as taonga (treasures) by Māori, and by tikanga Māori principles.10 The Assistant Commissioner carefully considered these factors, but ultimately found these could not render a completely descriptive mark distinctive in order to address the requirements of section 18 of the Trade Marks Act 2002 (NZ).11 While the Assistant Commissioner considered the protection of Māori intellectual property rights to be “undoubtedly of critical importance”, tikanga principles could not override clear provisions in the Trade Marks Act.12
An appeal remains open to MHAS. It has also applied for MĀNUKA HONEY as a certification trade mark in Australia, which remains under examination.13
By Jonathan Feder and Phoebe Naylor
Footnotes:
1 Manuka Honey Appellation Society Incorporated v Australian Manuka Honey Association Limited [2023] NZIPOTM 19, at [8].
2 New Zealand trade mark number 1025914.
3 At [314].
4 At [10].
5 At [271]-[281].
6 At [322].
7 At [352].
8 At [11].
9 At [13].
10 At [9], [405].
11 At [470]-[472].
12 At [9].
13 Australian trade mark application number 2304837.