New Zealand: Opposition Against Registration Of MANUKA HONEY Succeeds In New Zealand

The Intellectual Property Office of New Zealand (IPONZ) has upheld an opposition to registration of MÁNUKA HONEY as a certification trade mark in New Zealand, in Manuka Honey Appellation Society Incorporated v Australian Manuka Honey Association Limited [2023] NZIPOTM 19 (22 May 2023).

This case is consistent with similar decisions reached in the United Kingdom¹ and Europe² and also in Australia where the New Zealand Applicant Manuka Honey Appellation Society's (MHAS) application to register MANUKA HONEY as a certification mark was not accepted for registration.

Assistant Commissioner Natasha Alley's decision (AC Alley) is yet another chapter in this dispute and represents one of the most complex and long running proceedings to come before IPONZ.

MÁNUKA HONEY found not to be distinctive

AC Alley concluded that MHAS "has fallen short of establishing the necessary distinctiveness, both inherent and acquired". In reaching this conclusion, AC Alley gave respectful and considered weight to the Taonga (treasured) status of the word Manuka, noting that she "also considered tikanga Maori principles and Te Tiriti o Waitangi/the Treaty of Waitangi. The protection of te reo Maori kupu and Maori intellectual property rights are undoubtedly of critical importance and have been recognised as such by the Waitangi Tribunal....I have taken into account the Waitangi Tribunal Report "Ko Aotearoa Tenei: A Report into Claims Concerning New Zealand Law and Policy Affecting Maori Culture and Identity" (the Wai 262 Report)."

Remaining opposition grounds also successful

The Opponent Australian Manuka Honey Association Limited (AMHA) also succeeded in establishing that registration of the trade mark would be contrary to law – even though the law which was contravened is in fact the Trade Marks Act 2002 itself. As AC Alley had determined that the requisite certification regulations did not comply with Section 55 of the Trade Marks Act³ she concluded that registration of MANUKA HONEY would be "contrary to law", thus providing a successful opposition ground.

AMHA also asserted successfully that MHAS' use of MÁNUKA HONEY would be likely to deceive or cause confusion, as MHAS' certification process contained an unclear testing regime. AC Alley agreed, as MHAS was not able to establish that goods sold under the MÁNUKA HONEY certification trade mark would have been actively certified and checked to ensure compliance.

Recognition of Máori interests

This decision may be of interest beyond trade mark lawyers to IP lawyers interested in the protection and recognition afforded to the rights of indigenous people in any particular country. In this case AC Alley observed as follows, in addition to numerous other comments in relation to the interests of Máori:

".....I wish to make one observation about the relevance of Maori interests to the public interest consideration under s 55(1)(e) of the Act. I have already considered Maori concerns in the context of s 18(2) of the Act at length above. In terms of those concerns, I am not convinced that allowing one Association (that represents most but not all manuka honey producers in New Zealand) ownership of a certification mark that gives it a monopoly over the use of a descriptive word with Maori origins, to the exclusion of others including potentially some Maori honey producers, is consistent with tikanga principles, such as kaitiakitanga, or protecting the te reo Maori word manuka. The evidence before me does not demonstrate that registration of the certification mark will necessarily be in the interests of Maori. Ultimately, it is unclear, on the evidence before me, how Maori interests would be best served in the context of this certification mark application."

What next for MÁNUKA HONEY?

In the short term, it will be interesting to see if MHAS appeals this decision to the High Court of New Zealand. If such an appeal is pursued, this decision provides a comprehensive basis for the consideration of any appeal, noting that such appeals in New Zealand are not de novo.

Footnotes

1. Australian Manuka Honey Association Limited v Manuka Honey Appellation Society UK Intellectual Property Office Decision O/899/21 (13 December 2021)

2. EU IPO Decision R1410/2019-5

3. The requirements for the registration of a certification mark

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