Australia: Opposition success for Australian manuka honey producers in Trans-Tasman trademark tussle

Manuka Honey Appellation Society Incorporated v Australian Manuka Honey Association Limited [2023] NZIPOTM 19 (22 May 2023)

In "one of the most complex and long running proceedings to have come before the Intellectual Property Office of New Zealand (IPONZ)", as noted by the Assistant Commissioner of Trade Marks, Natasha Alley (AC Alley)¹, Australian Manuka Honey Association Limited (AMHA) have successfully opposed a trade mark application by the Manuka Honey Appellation Society Incorporated (MHAS) to register MANUKA HONEY as a certification mark in Class 30².

Background

By way of background, the Applicant, MHAS, incorporated in New Zealand in 2016 with the sole purpose in certifying and protecting the MANUKA HONEY certification mark³. MHAS does not produce honey, nor will it ever do so. The MANUKA HONEY certification mark was originally filed by UMF Honey Association Incorporated but, in May 2016, it was subsequently assigned to MHAS⁴.

The primary goal of the opponent, AMHA, is to protect and promote the global awareness and appeal of manuka honey produced in Australia to increase consumer's knowledge and awareness⁵. In August 2018, AMHA filed a notice to oppose the registration of the MANUKA HONEY certification mark on the opposition grounds of distinctiveness, deception and confusion, certification and international law, bad faith, and ownership⁶.

Distinctiveness ground of opposition - s 18(1) of the Act

As this was the primary ground of opposition, AC Alley carefully "gave due consideration" to each of the four subsections of s 18(1) but "focused on the clearest and strongest ground" being s 18(1)(c) of the Act⁷. Subsection (1)(c) purpose is to "prevent the registration of marks that are descriptive of the relevant goods or some characteristic of them".

The onus was on MHAS to establish that the MANUKA HONEY trade mark was distinctive of the applied for goods at the priority date⁸.

On one hand, AMHA alleged that MANUKA HONEY was descriptive due to its generic food name comprising of the word 'manuka' which is a common English name of a plant, and the word 'honey' is prescribed under standard 2.8.2 of the Australian New Zealand Food Standards Code⁹.

On the other, MHAS denied this and claimed the words 'Manuka Honey' had always been used in New Zealand in relation to honey produced in New Zealand from the nectar of the plant Leptospermum scoparium¹⁰. The official botanical name for the manuka plant is Leptospermum scoparium.

The MANUKA HONEY trade mark found to be descriptive

The parties were able to agree on the fact that the manuka plant is native to both Australia and New Zealand, and the word 'manuka' has been adopted into the English language from te reo Maori.

The decision provides "extensive factual" detail about the development of manuka honey in both countries and the Leptospermum scoparium plant "along with voluminous evidence and submissions"¹¹. The extensive submissions and evidence were enough for AC Alley find the term 'manuka honey' to be entirely descriptive of honey obtained from the plant Leptospermum scoparium¹²andconclude that MHAS "has fallen short of establishing the necessary distinctiveness, both inherent and acquired"¹³.

The AMHA opposition was therefore successful under ss 18(1)(b) and (c), and s 17(1)(b) of the Act, and no findings were made on any other grounds.

Similar MHAS disputes / decisions

There have been similar oppositions to MHAS' MANUKA HONEY marks. Most notably, in the United Kingdom, AMHA successfully opposed MHAS's application to register MANUKA HONEY as a certification mark on the ground that at the 2015 priority date, MANUKA HONEY was functioning as a descriptive mark to describe the goods which was a type of honey¹⁴. Similarly, in the European Union, the MANUKA HONEY application was rejected on the grounds of lack of distinctiveness¹⁵.

In the United States, the application has been held in abeyance pending the decision of this IPONZ decision¹⁶. And finally, in China, as of June 2020, the applications have been refused and the refusals are the subject of appeals¹⁷.

The future for MANUKA HONEY

We are yet to learn if MHAS will appeal this decision to the High Court of New Zealand. The Manuka Charitable Trust has also applied to register MANUKA HONEY as a certification mark in Class 30 and remains under examination by IP Australia¹⁸.

Footnotes

¹ Manuka Honey Appellation Society Incorporated v Australian Manuka Honey Association Limited [2023] NZIPOTM 19, at [1].

² New Zealand Trade Mark Application No. 1025914, priority date 18 August 2015.

³ Manuka Honey Appellation Society Incorporated v Australian Manuka Honey Association Limited [2023] NZIPOTM 19, at [33].

⁴ At [34].

⁵ At [44].

⁶ Under the Trade Marks Act 2002 (NZ).

⁷ Manuka Honey Appellation Society Incorporated v Australian Manuka Honey Association Limited [2023] NZIPOTM 19, at [293].

⁸ At [271]-[281].

⁹ At [295].

¹⁰ At [296].

¹¹ At [1].

¹² At [352].

¹³ At [8].

¹⁴ Australian Manuka Honey Association Limited v Manuka Honey Appellation Society UK Intellectual Property Office Decision O/899/21 (13 December 2021).

¹⁵ EU IPO Decision R1410/2019-5.

¹⁶ Manuka Honey Appellation Society Incorporated v Australian Manuka Honey Association Limited [2023] NZIPOTM 19, at [104].

¹⁷ At [105].

¹⁸ Australian Trade Mark Application No. 2304837, priority date 4 October 2022.

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