A Trans-Tasman legal wrangle of “extraordinary proportions” over trademark rights has gone against New Zealand mānuka honey producers trying to protect the term “mānuka honey”.
Intellectual Property Office of NZ (IPONZ) assistant commissioner for trademarks Natasha Alley in her ruling noted the scale, complexity and length of the challenge, with Kiwi producers pitted against Australian mānuka producers, who claimed “mānuka honey” was not a distinctive, NZ-only trademark.
The trademark commissioner’s ruling agreed, meaning that under the Trade Mark Act 2002 it could not be used as a certification mark in NZ.
The Australian opposition came from producers in the form of the Australian Mānuka Honey Association (AMHA), pushing back against the NZ based Mānuka Honey Appellation Society (MHAS).
Earlier this year NZ producers lodged an appeal to the equivalent office in the United Kingdom. As with the NZ ruling, the UK office found there was a lack of definition in the term.
The lucrative mānuka honey business valued at almost $300 million a year in 2021 has been fraught with trans-Tasman tension since NZ lodged its first application to protect the brand “mānuka honey” back in 2015.
The commissioner noted it was a challenging task, particularly when distinctiveness between the two sources was minimal, and NZ fell short in establishing the necessary distinctiveness.
The decision has been met with disappointment by the honey sector, which is now mulling over its options, including making an appeal.
“Today’s finding reflects the technicalities and limitations of conventional IP law to protect indigenous rights,” said Pita Tipene, chair of the Mānuka Charitable Trust.
“It is disappointing in so many ways, but our role as kaitiaki (guardians) to protect the mana, mauri, and value of our taonga species, including Mānuka on behalf of all New Zealanders, is not contestable.”
He said the law had proven to be an ass in this instance, with IPONZ limited to the legal criteria laid out in the Act.
The assistant commissioner noted that while tikanga (customary) principals were relevant, they could not override the clear provisions of the Trade Marks Act, with its requirements of distinctiveness.
She noted her “considerable sympathy” for NZ producers because of mānuka honey’s cultural significance. She observed there did not appear to be widespread use of the term in Australia until after NZ’s success took off, and well after the antibacterial properties were discovered in NZ in the 1980s.
“However, by the time MHAS applied for this certification mark in 2015 there was clear use of ‘mānuka honey’ in Australia.”
She noted a late start by Australia did not mean MHAS should be able to monopolise use of a wholly descriptive term, and savvy marketing by the Australians did not equate to dishonesty on their part.
Jason Prior of Down Under Honey in Cheltenham said the case has proven just how difficult it is to protect terms that have become commonly used.
“It is not because there is no case there, it’s just the law does not work with more generic terms.”
He likened it to trying to protect the term “Jandals”, well after they had been invented and the phrase had fallen into common use to describe the rubber sandal.
“But what the Australians are doing is like trying to call a leather sandal a Jandal, it’s quite different.”
He believed NZ producers could have a good pathway using Geographical Indication (GI) protection, similar to what the French use to protect Champagne, or the Italians Parmigiano Reggiano, and he is keen to see the NZ government work to bring in such a protection system.
Apiculture NZ CEO Karin Kos said the industry will be making a united stand on a decision it wholly disagrees with, but she would not be drawn on whether an appeal would be lodged at this point.
She is also optimistic about the potential role GI may play in protecting NZ mānuka honey, at least within the European Union.
GIs were a key part of the NZ-EU free trade agreement, where distinctions over certain cheeses’ provenance are made.
The EU FTA includes the definition of mānuka and a separate tariff recognising the distinctiveness of it as a taonga species solely from NZ.
NZ wines are also globally protected under GIs, setting out the regions and production claims that can be made by winemakers.