23 May 2023TrademarksMuireann Bolger

NZ loses dispute with Australia over mānuka TM

Antipodean clash over honey’s trademark rights described as “a tussle of extraordinary proportions” | Feud between the two countries spans nearly a decade.

New Zealand beekeepers have failed once again to trademark mānuka honey, marking another setback in their long-running battle to prevent rival honey makers from using the name.

On Monday, May 22, the New Zealand Intellectual Property Office (IPONZ) delivered its decision describing “the case as a trans-Tasman tussle of extraordinary proportions”, ruling that the mark could not be registered because it was descriptive.

In 2021, the UK Intellectual Property Office also refused the association’s request for the same trademark on similar grounds.

Describing the legal wrangle as “one of the most complex and long running proceedings to have come before the IPONZ”, the office said the case involved “extensive factual and legal issues, some of which are novel, along with voluminous evidence and submissions”.

Mānuka, also known by its latin name, Leptospermum scoparium, refers to a white flowered tree that grows in both countries, which has become renowned worldwide for its medicinal properties and health benefits.

The dispute emerged in 2015, when the Manuka Honey Appellation Society (MHAS) sought to register the mark for mānuka for honey exclusively produced in New Zealand.

However, the Australian Manuka Honey Association (AMHA) later successfully opposed the application.

Indigenous rights

New Zealand contended that the ‘mānuka’ name is a Māori word, and is consequently inextricably associated with the country’s indigenous tribal heritage and its own honey production.

Regional Economic Development Minister Shane Jones even accused Australian honey producers of trying to steal what was indigenous to New Zealand, reported RNZ.

“The Aussies are trying to promote themselves as the owners of the mānuka honey brand. That is wrong culturally, that is a type of economic larceny,” he said.

In a mark of support, New Zealand’s government has allocated nearly $6 million to MHAS’ quest to secure national and international IP rights for its produce.

But in this week’s ruling, the office noted that not only is this plant native to New Zealand but it is also native to Australia—even though mānuka is more commonly referred to as ‘tea tree’ in Australia.

“In fact, some scientists consider that Leptospermum scoparium originated in Australia, and migrated across the Tasman Sea to Aotearoa New Zealand,” observed the office.

“Not only is the Leptospermum scoparium plant native to Australia, but monofloral honey can be made from the nectar of that plant in Australia.”

Australian honey, it added, has also met various authentication tests for genuine ‘manuka honey’, namely “honey from the nectar of Leptospermum scoparium”.

Descriptive, not distinctive

The office went on to say that despite its origins, the word ‘mānuka’ has also been used in the English language in both New Zealand and Australia.

“A trademark that is descriptive of goods, and therefore not distinctive, cannot be registered for those goods unless the trademark has acquired distinctiveness, either through use or any other circumstance.

“Generally speaking, the reason for this requirement is that descriptive words should be available for use by the public and honest traders, rather than being monopolised by the trademark owner,” said the office.

On this basis, it went on to determine that the MHAS had fallen short of establishing the necessary distinctiveness, “both inherent and acquired”.

While conceding that the protection of Māori IP rights is undoubtedly of critical importance, the office concluded that such considerations cannot override clear provisions in the  country’s Trademarks Act.

Savvy marketing ‘not dishonest’

It also accepted that while New Zealand mānuka honey industry was once undoubtedly more advanced than Australia’s nascent manuka honey industry, the office held that subsequent “savvy marketing” by Australian producers does not “equate to dishonest trading on their part”.

“Nor does it justify the registration of a purely descriptive word by MHAS as a certification mark in New Zealand,” it said.

Pita Tipene, chair of the Manuka Charitable Trust, said the decision was “disappointing in so many ways”, and vowed to continue the fight.

“If anything, it has made us more determined to protect what is ours on behalf of all New Zealanders and consumers who value authenticity,” he said.

“Our role as kaitiaki [guardians] to protect the mana [dignity] and value of our taonga [treasured] species, including mānuka on behalf of all New Zealanders is not contestable.”

Particular languages

Meanwhile, Australian Manuka Honey Association chairman Ben McKee welcomed the ruling, saying he was “delighted”.

“Our product has a long history of being recognised as mānuka honey, it is produced like the NZ product is, and it also offers the sought-after antimicrobial properties that consumers around the world value so highly.

“Indeed, there is research to show Australian honey has stronger antimicrobial benefits and a better taste than the NZ offering. This decision is a sensible outcome that ensures Aussie beekeepers can fairly market their produce.”

Commenting on the case, Khemi Salhan, IP principal associate at the law firm, Gowling WLG, said that the case underscored some key lessons when it comes to registering rights based on the product’s source in a particular language, rather than a specific geographical origin.

“Often trade associations or a group of business owners producing a valuable substance look to register rights based on specific criteria about exactly where or how the product is made.

“This is why we have Melton Mowbray pork pies and champagne. In this case, the word ‘mānuka’ arguably describes the source of the honey in a particular language, rather than limiting it to a specific region or production system that should be granted special protection.”

Both parties have 20 working days to appeal the decision to New Zealand’s High Court.

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