In Australia, trade mark registration operates on a “first-to-use” basis, which means that the owner of a trade mark is the first entity to use that trade mark in relation to goods and services.
A Sticky End to a Trans-Tasman Stoush
Key take aways
- Lack of distinctiveness: This ruling highlights the challenge of obtaining exclusive rights for a widely used descriptive term. The decision emphasises that “Manuka Honey” is a descriptive term and does not possess the necessary distinctiveness to function as a certification trade mark.
- Potential consumer confusion: Protecting consumers from confusion and deception is a crucial consideration in trademark decisions. The decision suggests that the prior use of “Manuka Honey” would result in a significant number of consumers being misled or confused should the certification trade mark be registered.
- International disputes: The rejection of the application in New Zealand adds to the ongoing international disputes surrounding the use and protection of the term and other geographical indicators, for example, moves by Italy to protect the use of Prosecco and Parmesan in Australia.
Manuka honey (also known as Mānuka in Māori) is made in Australia and New Zealand by bees that pollinate the native leptospermum scoparium bush (also known as a tea tree). It is understood to have unique antibacterial qualities and research shows Manuka honey to be effective in treating a variety of conditions, such as eczema and dermatitis, in supporting digestive health and in wound care. These qualities set it apart from regular honey and as a result, honey producers try to ensure that only genuine Manuka honey is sold under that name.
In New Zealand, and other parts of the world, the Manuka Honey Appellation Society (MHAS) has applied for a certification trade mark for the term “Manuka Honey”. A certification trade mark indicates that the goods are certified, by a particular organization, as meeting a particular standard of quality or accuracy, or as having a particular composition, mode of manufacture, geographical origin or some other characteristic.
In this case, the MHAS was seeking to limit the use of Manuka Honey to only honey produced in New Zealand from leptospermum scoparium bushes. This posed an issue for Australian honey producers who also make honey from tea tree flowers and other plants in the leptospermum family as they would have no longer been able to use the name Manuka Honey to describe their product.
New Zealand Trade Mark Office Action
The Intellectual Property Office of New Zealand (IPONZ) has rejected the MHAS application to register “Manuka Honey” as a certification trade mark. The decision states that “Manuka Honey” is descriptive and lacks distinctiveness, and its use as a certification trade mark could deceive or confuse consumers. The New Zealand certification trade mark was initially accepted for registration in 2015. But that registration was opposed by the Australian Manuka Honey Association (AMHA), leading to what IPONZ describes as “…one of the most complex and long-running proceedings to have come before IPONZ”.
The decision allows Australian honey producers to continue using “Manuka Honey” in New Zealand. This decision adds New Zealand to the list of countries that have refused protection for “Manuka” as a trade mark. Applications in Australia and Europe were also refused on descriptiveness grounds; AMHA successfully opposed the registration in the UK, while a decision in the US is on hold pending the outcome of the IPONZ decision.
The New Zealand Trade Mark Act, like so many other trade mark laws around the globe, prevents the registration of trade marks that are not distinctive or that may be “descriptive of the relevant goods or some characteristic of them” (Trade Mark Act 2002 (NZ) s18(1)(c)). The distinctiveness test involves assessing whether the “average consumer” would regard the certification trade mark as a usual way of designating characteristics of the goods in question. IPONZ concluded that the average consumer would not find the proposed “Manuka Honey” trade mark to be distinctive. This was mainly because the term was already used extensively by both New Zealand and Australian honey producers before the application was lodged.
The Assistant Commissioner of Trade Marks, Patents, and Designs, Natasha Alley, sympathised with New Zealand honey producers acknowledging their historical connection to the medicinal uses of the Mānuka plant and discovery of the antibacterial properties of Manuka honey. However, the decision highlights the clear use of “Manuka Honey” by Australian producers to describe honey produced from the Leptospermum scoparium tree, which is native to both countries. As a result, Australian producers are allowed to use the term to describe their own mono-floral honey.
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