There have been recent developments in the long-standing sticky situation between New Zealand and Australian honey producers over the use of the term ‘Mānuka’, with New Zealand’s Mānuka Honey Appellation Society Incorporated (MHAS) withdrawing from an appeal to the High Court in the United Kingdom regarding an unfavourable decision from the UKIPO that barred the Kiwi’s from exclusive use over the term.
Background
MHAS has been locked in a dispute with Australian Mānuka Honey Association Limited (AMHA) since at least 2016 over a claim by MHAS that ‘Mānuka’ is a term from the Māori language of New Zealand and due to this, New Zealand honey producers should have exclusive rights to use this term in respect of honey derived from the Leptospermum scoparium plant (L. scoparium).
Australian honey producers, led by the AMHA, have vehemently contested this by claiming that honey from the L. scoparium plant is produced in Australia also and ‘Mānuka’ has been used in Australia for these honey products since at least the 1930s.
Why all the buzz?
Mānuka honey reaches top dollar on the local and international markets due to its reputation for having unique medicinal and antibacterial qualities. The Mānuka honey industry is worth billions of dollars each year with the bulk of the honey being produced in New Zealand and Australia.
How this dispute has played out globally
To date, the dispute between MHAS and AMHA has played out in a number of jurisdictions, including New Zealand, Australia, the European Union, United Kingdom and the United States:
New Zealand
MHAS filed a certification application in 2015 for MANUKA HONEY (No. 1025914) which was subsequently accepted by IPONZ following a favourable decision in 2018 where the Assistant Commissioner determined that the trade mark was sufficiently distinctive to operate as a certification mark in New Zealand by indicating that the honey has a particular geographical origin (New Zealand). This application was then opposed by AMHA and the proceedings are still in progress.
Australia
MHAS filed a certification application in 2017 for MANUKA HONEY (No. 1752903) but it subsequently lapsed. AMHA has since successfully obtained a standard registration for a logo comprising the word MANUKA (No. 1939743).
Separately in 2021, MHAS lost an opposition to a trade mark comprising the words ‘AUSTRALIAN MANUKA’. Contrary to the comments made by the Assistant Commissioner in New Zealand, the Australian Registrar formed the view that ‘Mānuka’ in Australia would be viewed as an indication of the plant variety that the honey is derived from, rather than the geographical source. On this basis, there was no connotation in the opposed mark which would be associated with New Zealand, and thus cause deception and confusion amongst Australian consumers.
United States
MHAS filed a certification mark in 2016 for MANUKA HONEY (No. 86910788) which is still under examination. Amongst other objections, the trade mark faces a descriptiveness objection on the grounds it describes honey from the L. scoparium, otherwise known in New Zealand as ‘Mānuka’. The application is suspended.
European Union
MHAS lost an appeal to the Examiner’s decision to refuse the certification application for MANUKA HONEY (No. 017285421) on the grounds it was descriptive of a type of honey.
United Kingdom
MHAS has dropped its appeal of the decision by the UKIPO to refuse their application for the MANUKA HONEY mark (No. UK000031502612) following an opposition by AMHA, citing that while it may have originally started out as a Māori word, it has become common to the trade as a reference to a type of honey.
What does this mean for New Zealand honey producers?
It appears that New Zealand’s grip on this trans-Tasman battle is dipping to an all time low, with the consolation prize being the hope of securing registration of the trade mark in New Zealand. The latest development in the UK suggests that MHAS may be reconsidering their position and moving away from their desired model of exclusivity.
Key takeaway
What this scenario tells us is that the perception or knowledge of a term may have different meanings to consumers in different countries, which may take precedent over the historical origins or meaning that it originally possessed. This can impact on the registrability of a trade mark and result in conflicting outcomes.
