The Intellectual Property Office of New Zealand refused the application for registration following what has been described as “one of the most complex and long running proceedings to have come before the Intellectual Property Office of New Zealand”1. Since first applying to IPONZ in 2015, MHAS has been met with fierce opposition from the Australian Manuka Honey Association (AMHA), with the battle described as a “trans-Tasman tussle of extraordinary proportions”2.
MHAS applied to register ‘mānuka honey’ as a certification mark. Although the application was eventually accepted by IPONZ, it was then opposed by the AMHA on the basis that ‘mānuka honey’ is descriptive and non-distinctive for honey.
Certification marks differ from standard trademarks in the sense that they serve as a ‘trust’ indicator to consumers, by indicating that a product meets a certain quality or standard. In order for a product to receive a certification mark, the product will need to comply with a set of criteria, that will often be assessed and monitored by a third party. In order to register a certification mark, the applicant will need to provide the relevant set of criteria that the product will need to comply with in order to receive certification.
The decision considered the applicability of Geographical Indications, a topic that recently received attention when ’feta’, amongst other product names, was given protection under New Zealand’s Free Trade Agreement with the European Union. In Aotearoa New Zealand, Certification Trade Marks are often used in a similar fashion to the way geographical indications are used in other jurisdictions. They work to identify a good as originating from a specific locality. The decision acknowledged the international debate about geographic indications and how these could be used to protect traditional knowledge as observed in the Wai 262 Report. Currently, geographic indications only apply to wine and spirits in New Zealand, but the Waitangi Tribunal has identified the potential for this protection to be extended beyond this scope.
Consideration of tikanga played a significant role in the decision both at a preliminary level and in relation to the substantive decision regarding the distinctiveness of the mark. On the basis of the statements relating to tikanga from Peter Hugh Mcgregor Ellis v R [2022] NZSC 114 [7 October 2022], the Commissioner allowed the parties to file further submissions regarding the applicability of tikanga to the opposition proceeding and in particular to the issue of whether the application could be held to be distinctive, but declined to allow the MHAS to file further evidence on the role of tikanga.
MHAS argued that the distinctiveness of ‘mānuka honey’ must be assessed in relation to the cultural context in which they derive, referencing the mana of the mark and the significance of “Mānuka” in Te Ao Māori. However, the Commissioner preferred the position put forward by AMHA, that Ellis cannot modify the statutory test for distinctiveness and ultimately held that tikanga principles could not elevate the ‘mānuka honey’ from being a descriptive mark to a distinctive one – a key criterion for trademark registration.
The decision indicates an increasing interest in the role of tikanga and the importance of indigenous concepts and rights and their ability to influence our understanding of current intellectual property laws. With the applicants sure to appeal the decision to the High Court, the trans-Tasman battle over mānuka honey seems far from over.
If you have any questions about the matters raised in this article, please get in touch with the contacts listed or your usual Bell Gully adviser.
[1] Manuka Honey Appellation Society Incorporated v Australian Manuka Honey Association Limited [2023] NZIPOTM 19 at [1]
[2] At [1].