A sticky end for the Manuka Honey certification trade mark

What you need to know

• New Zealand honey producers have failed to secure a certification trade mark registration in New Zealand for "Manuka Honey".
• The long awaited decision by the NZ Intellectual Property Office refused the application on several grounds, including that "Manuka Honey" is descriptive.
• New Zealand joins a growing list of countries to refuse protection of "Manuka" as a trade mark. 

The Intellectual Property Office of New Zealand (IPONZ) has handed down its long-awaited decision in the Manuka Honey certification trade mark case.  The Australian Manuka Honey Association (AMHA) was successful in opposing an application by the Manuka Honey Appellation Society to register a trade mark that would have effectively barred Australian producers from use of the term "Manuka Honey" in New Zealand.

The New Zealand certification trade mark was initially accepted by IPONZ in 2015. But that registration was opposed by the AMHA, leading to what IPONZ describes as, "…one of the most complex and long running proceedings to have come before IPONZ."

The 171 page decision of Natasha Alley, the Assistant Commissioner of Trade Marks, Patents and Designs, held that the New Zealand honey producers had fallen short of establishing that "Manuka Honey" had the required distinctiveness to function as a certification trade mark.  Ms Alley also considered that use of "Manuka Honey" as a certification mark would be likely to deceive, or at least confuse, a substantial number of consumers. 

The decision expressed considerable sympathy for the New Zealand producers, noting that it was the Māori who first recognised the medicinal and therapeutic uses of the mānuka plant, and New Zealand scientists who discovered the antibacterial properties of Manuka Honey in the 1980s.  However, the decision also notes that by the time of the certification trade mark application in 2015, there was clear use of "Manuka Honey" by Australian producers to describe the honey produced from the Leptospermum scoparium tree.  Because Leptospermum scoparium is native to both countries, Australian producers remain free to describe their own mono-floral honey, notwithstanding that mānuka is a Māori word.

Our November 2019 and 2020 Food Law Updates trace the international aspects of the dispute between the parties.  But this most recent defeat on home turf may finally spell the end of attempts by the New Zealand producers to secure exclusive use of the term "Manuka Honey".

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

Authors: Carrick Brough, Senior Associate; Kellech Smith, Partner.