Described by the New Zealand Assistant Commissioner of Trade Marks, Patents and Designs as a “trans-Tasman tussle of extraordinary proportions” and “one of the most complex and long running proceedings to have come before the Intellectual Property Office of New Zealand”, the recent decision of Manuka Honey Appellation Society Incorporated v Australian Manuka Honey Association Limited [2023] NZIPOTM 19 (22 May 2023) provided a comprehensive overview of the interplay of certification marks and indigenous considerations in New Zealand.
The decision marks a final chapter in an ongoing dispute between New Zealand and Australian honey producers since at least 2015. The mark in question, MANUKA HONEY, was the subject of New Zealand Trade Mark Application 1025914 filed on 18 August 2015 for “honey” by Mānuka Honey Appellation Society (MHAS). MHAS sought to register the trade mark as a certification mark whereby the mark could only be used on honey produced in New Zealand which met the required standards for mānuka honey according to New Zealand law, including that it be produced using the Leptospermum scoparium plant.
The background to the matter involved local and foreign proceedings, including a successful ex parte hearing on the distinctiveness of the trade mark before IPONZ in 2018. Further details of the foreign applications and opposition disputes and history can be found here: Certification Trade Marks: the buzz and battle over ‘Mānuka’ honey and New Zealand honey producers back down in Mānuka trade mark dispute.
Opposition successful, although not without sympathy
Following the acceptance of the application, the Australian Manuka Honey Association Limited (AMHA) opposed it on a number of grounds, including that MANUKA HONEY lacked distinctive character as it described honey sourced from the nectar of the Leptospermum scoparium plant, commonly known in New Zealand as the mānuka plant. In finding in favour of AMHA, Assistant Commissioner Alley said that MHAS fell short of establishing the necessary inherent and acquired distinctiveness in the mark. She expressed considerable sympathy for the position faced by MHAS largely due to the “cultural significance of mānuka honey, and because there does not appear to have been widespread use of the term “manuka honey” by Australian honey producers until the New Zealand trade in mānuka honey took off, and well after the discovery of the valuable antibacterial properties of that honey by New Zealand scientists in the 1980s”[1].
Nonetheless, Assistant Commissioner Alley referred to there being clear use of MANUKA HONEY in Australia to describe honey produced by the Leptospermum scoparium plant which is also native to Australia. She noted that “savvy marketing”[2] in adopting the MANUKA name did not equate to dishonest practices on the part of Australian honey producers.
The finding that the MANUKA HONEY mark lacked inherent or acquired distinctiveness contrasted with an earlier ex parte decision by Assistant Commissioner Glover who overturned the Examiner’s decision in refusing to accept the trade mark for registration. Assistant Commissioner Glover found that the trade mark was capable of indicating that the honey goods originated from New Zealand, but Assistant Commissioner Alley distinguished this finding in the current proceedings on the grounds that the scope of the hearing was much broader – that is, the volume and detail of the evidence was more extensive and Assistant Commissioner Glover did not have the benefit of considering submissions and evidence from the Opponent, AMHA.
Assistant Commissioner Alley was also satisfied that AMHA had established the ground of opposition that use of the MANUKA HONEY mark was likely to deceive, or cause confusion, amongst a substantial number of consumers. This is because a condition of registration of the certification mark is that it always be used with a clear indication it is a certification mark. Accordingly, if the MANUKA HONEY mark was to be registered as a certification mark, it was likely to cause consumers to think that a producer of “manuka honey” has indeed met the requirements of certification as required by MHAS, including that the honey be produced in New Zealand. This would clearly not be the case for Australian produced honey.
This appears, for now, to mark the end of the road by MHAS in the registration of MANUKA HONEY as a certification mark in New Zealand as well as overseas. The decision has not been appealed and the application is now abandoned on the Register.
Cultural considerations and the law in New Zealand
While it was not the outcome MHAS wanted, the decision gave some interesting insights into the interaction between New Zealand trade mark law and indigenous considerations. The New Zealand Māori represented approximately 17.4% of the national New Zealand population in 2022[3]. The application of Tikanga Māori, being the values, standards, principles or norms that the Māori community subscribe to in order to determine the appropriate conduct, is intertwined throughout New Zealand law, including by the application of the principles of the Treaty of Waitangi – New Zealand’s founding document signed by the British Crown and 540 Māori chiefs in 1840. Recognition is also given to concepts or objects that have ‘taonga’ status by Māori, that is, ‘treasures’.
Put simply, Māori culture and considerations are an important aspect of the political, legislative and community framework of the country. It is worth noting that tikanga principles already form part of the Trade Marks Act 2002 (Act), including by way of Section 17(1)(c) which prohibits the registration of a trade mark where its use and reputation would likely offend a significant section of the community, including Māori. Procedurally, this is determined by a specialist panel of members (Māori Advisory Committee) who are knowledgeable in tikanga and aspects of the Māori language (te reo Māori) and culture.
Given the high stakes to both parties in the proceedings, and the cultural aspects brought about by MANUKA being a derivative of te reo Māori, it was therefore important for the Assistant Commissioner to consider the impact of any decision on Māori. This involved consideration of the taonga status of mānuka as a Māori word and a plant, the principles of tikanga Māori and the Treaty of Waitangi, and the Waitangi Tribunal ‘Wai 262 Report’ concerning New Zealand law and policy affecting Māori culture and identity.
Assistant Commissioner Alley was careful to note, however, that whilst these policies and principles played a role in her decision, it was the application of the Act that was determinative.
Tikanga and distinctiveness
In assessing the evidence to determine if the trade mark had acquired a sufficient level of distinctiveness, Assistant Commissioner Alley considered whether MHAS had established this through ‘other circumstances’ – that is, MANUKA HONEY had acquired distinctiveness due to the taonga status of mānuka and the fact that only mānuka honey produced in New Zealand is lawfully sold due to a long-standing import ban on foreign honey into New Zealand for biosecurity reasons.
Specifically, MHAS argued that MANUKA HONEY has an elevated significance in New Zealand amongst Māori due to recognition of its taonga status and the passing down of traditional knowledge relating to its healing powers and use. Assistant Commissioner Alley noted though that if registration of the trade mark was to be allowed on this basis, tikanga principles would be the deciding factor in this case and would effectively override her conclusion that the certification mark was not inherently distinctive, and had not acquired sufficient distinctiveness through use. Further, she stated “The Act does not provide for a mark to achieve greater distinctiveness where it has the support of a significant section of the community…”[4].
In cementing this position, she also agreed with AMHA that the mandate of the Māori Advisory Committee is to provide advice on the offensiveness of a trade mark in accordance with Section 17(1)(c) of the Act, and not on the distinctiveness of the mark and/or if the trade mark should be registered or otherwise. In responding to MHAS’ argument that the application for the trade mark should have been sent to the Māori Advisory Committee for consideration, Assistant Commissioner Alley states, “Its role would not have been to advise on whether failure to register the mark would likely to be offensive to Māori”[5].
Finally, there was discussion over the use of “manuka” in the trade mark absent the macron above the ‘a’ which has the effect of lengthening the vowel sound. While a close derivative, “manuka” is an English loanword, meaning that it has been adopted into the English language having been ‘borrowed’ from te reo Māori. Assistant Commissioner Alley felt the argument that the trade mark took on elevated significance due its taonga status as a Māori word was “contrived”[6] given the application comprised of a trade mark using the English loanword, rather than “mānuka”. She noted that evidence demonstrating use of the Māori word “mānuka” prior to the relevant date in the proceedings may have enhanced its distinctiveness and recognition as denoting the New Zealand origin of the goods, as well as distinguishing it from the use of “manuka” by Australian honey producers. However, on the evidence, this was not established.
Practical implications
Overall, in some respects this outcome may do little to change the status quo in New Zealand given the importation ban on mānuka honey into the country. It can be drawn from the concluding comments made by Assistant Commissioner Alley that MHAS had larger intentions to effectively use the successful certification of the MANUKA HONEY mark in New Zealand as a stepping stone towards controlling and securing the use of the mark on the international scene for New Zealand honey producers only. These efforts have now been permanently hampered, at least for MHAS – although an application for MĀNUKA HONEY is pending in the name of the Mānuka Charitable Trust which comprises representatives from Māori tribes.
One of MHAS’ arguments was that Australian honey producers had effectively “jumped on the bandwagon”[7] by using the MANUKA HONEY name that New Zealand honey producers had worked hard to establish a reputation in, and indeed, Assistant Commissioner Alley noted that the Australian manuka honey industry developed later than in New Zealand. However, a decision on the registrability of the trade mark needed to be made based on the circumstances as they were at the time that the application was filed in 2015. By this stage, there was clear evidence that Australian honey producers were using MANUKA HONEY descriptively to refer to a type of honey rather than its geographical origin.
This decision in many respects, and with the benefit of hindsight, demonstrates the importance of acting quickly in registering trade marks, particularly those which denote geographical and cultural significance.
[1] Manuka Honey Appellation Society Incorporated v Australian Manuka Honey Association Limited [2023] NZIPOTM 19 (22 May 2023), at paragraph 11
[2] Ibid, at paragraph 13
[3] https://www.stats.govt.nz/information-releases/maori-population-estimates-at-30-june-2022
