Australian trademark decision a pet peeve for New Zealand honey producers – Intellectual Property

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Battle lines have again been drawn between New Zealand and Australia in a recent trade mark decision by the Australian Trade Mark Office. Manuka Honey Appellation Society Incorporated v Lawrence Michael Howes [2021] ATMO 64 (July 7, 2021)(“Australian Opposition”) which is the latest development in the long-running dispute between New Zealand and Australian honey producers.

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The word ‘Manuka’ is the Maori name for honey derived from the Leptospermum scoparium plant (“L. scoparium“). Unlike other honeys, honey produced from L. scopaire has unique qualities, both in terms of taste and its anti-bacterial and medicinal properties. For this reason, it is sought after worldwide and fetches a price premium.

The opponent in the Australian opposition, The Manuka Honey Appellation Society Incorporated (“MHAS”), is a New Zealand company established for the purpose of securing ownership of the “Manuka” trademark in New Zealand and abroad for New Zealand honey producers.

MHAS’ claim of ownership is based on the fact that the trademark “Manuka” designates honey produced from
L. scopaire, found in New Zealand and known as Maori for this honey. This, by the nature of the cultural and geographic connection with the Maori people of New Zealand, sets the framework for the MHAS claim that only New Zealand producers of honey from L. scoparium in New Zealand should have the right to use the term ‘Manuka’.

Like L. scoparium is found in Australia and that honey with similar medicinal qualities is also produced in Australia, the claim of ownership of MHAS has been hotly contested by Australian honey producers.

The dispute in Australia

The Australian opposition relates to Australian Trademark Application No 1869737 for the mark, with regard to “honey”. The main argument presented by the MHAS was in accordance with Article 43 of the
Trade Marks Act 1995given that the registration of the mark must be rejected because it carries an inherent connotation that the apiculture products covered by the application are produced by bees of L. scoparium in New Zealand. Because of that connotation, the joint use of the words ‘Australian’ and ‘Manuka’ in the mark at issue is inherently contradictory and would cause confusion in the minds of the public.

After reviewing the arguments and evidence of MHAS and the trademark applicant, the delegate concluded that the ground of opposition had not been accepted. It would appear that the term “Manuka” has been used by Australian honey producers since at least the 1930s in relation to honey derived from L. scoparium in Australia. On this basis, the Delegate determined that the use of ‘Manuka’ would be considered “concerned with the floral source, as opposed to geographic,and that the mark in question was unlikely to mislead or confuse Australian consumers.

The result in the Australian opposition is interesting because the conclusion made about the connotations of “Manuka” was contrasted with comments made by the Deputy Commissioner of the New Zealand Hearings Office in the decision, Manuka Honey Naming Society Incorporated [2018] NZIPOTM 7 (20 March 2018) (“New Zealand Decision”).

In that decision, the Assistant Commissioner said:

“…the fact that the honey is labeled as honey from the nectar of a well-known indigenous tree, which is identified by a Maori name, is likely to indicate that the honey has a particular geographical origin (New Zealand)…” (Manuka Honey Appellation Society Incorporated [2018] NZIPOTM 7 (20 Mar 2018), 63).

The Assistant Commissioner then concluded in favor of the authorization of the registration of MANUKA HONEY as a certification mark indicating:

“…with a certification mark – in effect, existing and future merchants transfer the mark to a collective body for management. The aim is generally to prevent the use of the mark by merchants outside the region.” (Manuka Honey Appellation Society Incorporated [2018] NZIPOTM 7 (20 Mar 2018), 68).

The decision to grant MHAS’ application for registration in New Zealand has now been challenged by the Australian Manuka Honey Association Limited (“AMHA”) and the opposition is pending. However, while the issues raised in the New Zealand decision were different from those considered by the Delegate of the Australian Opposition, in that the Deputy Commissioner was considering the distinctiveness of MANUKA HONEY as a trade mark for the purposes of registration as a certification mark, it reflects the contrast of the positions defended by the interested parties in each country.

Where to go from here?

There is no doubt that the AMHA will build on the comments of the Australian Opposition Delegate in its quest to try to prevent the successful registration of MANUKA HONEY as a certification mark in New Zealand by MHAS . Although New Zealand law prohibits the import of foreign honey into New Zealand, the recognition of “Manuka” as a certification mark in New Zealand may well have a domino effect around the world when it comes to honey. assertion by MHAS that the mark is a geographical indicator.

The stakes for honey producers on both sides of Tasmania are high and we will keep you updated on developments as they arise.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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