The Manuka Honey Appellation Society (MHAS), with NZ$6 million (US$3.8 million) in support from the central government, has tried for almost a decade to trademark the term “manuka honey” to refer to those that are produced in New Zealand solely.
They argue that the word manuka is an English loan word adopted from the Maori word mānuka and therefore was in New Zealand’s interests to own the trademark.
On the other side, the Australian Manuka Honey Association (AMHA) has opposed this move, saying that the manuka honey products made in Australia are also genuine.
While the manuka plant is well known as being native to New Zealand, it is also native to Australia and is particularly widespread in Tasmania.
“In fact, some scientists consider that Leptospermum scoparium originated in Australia and migrated across the Tasman Sea to Aotearoa, New Zealand,” the commissioner said.
The AMHA acknowledged that “mānuka,” written with a macron, is a Maori word but argued that trademarking a descriptive term would lead to a false representation that manuka honey only comes from New Zealand.
Importantly, the MHAS application specifically aims to trademark “manuka honey” without the macron.
But the ruling said that manuka is “undoubtedly” a descriptive term that indicated honey made from the manuka plant, which is native to both countries. Therefore, regardless of the origins of the term, it lacks enough distinctiveness to warrant a trademark.
The NZIPO commissioner said while the New Zealand manuka honey industry had been ahead of its Australian counterpart early on, that did not mean that the branding of manuka honey by Australian companies was false.
“Savvy marketing by Australian honey producers does not equate to dishonest trading on their part. Nor does it justify registration of a purely descriptive word MHAS as a certification mark in New Zealand,” the ruling said.
NZ Disappointed, Australia Celebrates
The Mānuka Charitable Trust was disappointed by the ruling, saying it reflected the limitations of IP laws to “protect Indigenous rights.”“We remain resolute in protecting our reo Māori (language) and the precious taonga (treasure), and today’s ruling in no way deters us. If anything, it has made us more determined to protect what is ours on behalf of all New Zealanders and consumers who value authenticity,” said Pita Tipene, Chair of the Manuka Charitable Trust.
He said that industry partners remained “steadfast” in their view that it was not appropriate for other countries to use the name “mānuka honey” (with the macron) if the nectar came from a plant not grown in New Zealand.
Meanwhile, AMHA chairman Ben McKee said Australian manuka honey producers were delighted at the “sensible decision.”
“Our product has a long history of being recognised as Manuka honey, it is produced like the NZ product is, and it also offers the sought-after antimicrobial properties that consumers worldwide value so highly,” he said.
“This decision is a sensible outcome that ensures Aussie beekeepers can fairly market their produce.
“It also sees NZ following other precedents around the world that Manuka honey is a descriptive term.”
McKee noted that aside from the group of producers that spearheaded the trademark move, there are others in the New Zealand honey industry that are prepared to work collaboratively with the Australian industry.
“The fact that even authorities in New Zealand cannot find a way to support the trademark claims of NZ producers should, we hope, bring this legal dispute to an end once and for all.”
The ruling follows similar legal proceedings made in the United Kingdom and European Union.
In 2016, the UK accepted the MHAS’s registration of the certification mark “manuka honey,” a decision that was later overturned by the UK Intellectual Property Office following an appeal by the AMHA.
In 2017, the registration of manuka honey also appeared before the EU Intellectual Property Office but was rejected.
The MHAS appealed both decisions, which was withdrawn in January this year—a “sweet win,” AMHA said.
