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Honey Industry Abuzz Over Trans-Tasman Dispute
Since 2015, the Mānuka Honey Appellation Society (MHAS) and the Mānuka Charitable Trust has sought to register MANUKA HONEY as a certification mark in New Zealand. MHAS has attempted to protect MANUKA HONEY overseas as well. It has arguably been a downhill battle. The UK Intellectual Property Office rejected their application in 2021. Also in 2021, IP Australia rejected MHAS’ opposition to the registration of the following mark:
And in 2023, the Intellectual Property Office of New Zealand upheld an opposition by the Australian Manuka Honey Association (AMHA) to the registration of MANUKA HONEY.1 The Mānuka Charitable Trust (“the Trust”) has since taken on MHAS’s fight for sole IP rights to the term. This article discusses the development of the trans-Tasman dispute, its reasoning, and the implications this may have on Māori IP rights and the New Zealand honey industry.
The Bid to Secure Protection for Mānuka in New Zealand
Considered a taonga,2 Trust chairman Pita Tipene3 argues that use of mānuka by traders outside of NZ is a breach of indigenous rights as it interferes with Māori to practice kaitiakitanga.4
Further, sales of mānuka honey is a source of economic gain in New Zealand, offering work opportunities and up to $500 per kg of mānuka honey, a price that reflects the demand for the honey’s health benefits. Larger international players pose a significant threat to the New Zealand honey market, threatening to weaken the authenticity and geographical ties to the original source of mānuka in Aotearoa / New Zealand. With the global mānuka honey market being a billion-dollar industry annually and generating $436 million in NZ exports alone in 2022,5 the stakes are heightened for all involved.
The New Zealand government showed its support for intellectual property protection for mānuka honey with a $6 million grant in 2019.6
International Use of Mānuka
The initial push for trade mark registration internationally stemmed from the desire to prevent Australian producers marketing their honey as mānuka. The AMHA opposed the Trust’s application to register the mark in the UK, arguing that the Australian mānuka honey industry had invested in its development in the Australian market, and that the term was descriptive of a type of honey that was not exclusive to New Zealand.
The Trust argued that the term mānuka refers to a distinct type of nectar that is produced in a native New Zealand tree species (Leptospermum scoparium tree). However, L Scoparium is also native to Australia, where there are multiple Leptospermum varieties which allow the trans-Tasman rival to produce multifloral honey.7 Comparatively, New Zealand produces monofloral honey solely from the L Scoparium sub-species. The extensive healing and beneficial properties of Mānuka honey are guaranteed to be exclusive to that species.
The Ministry of Primary Industries maintains the only formal scientific definition for mānuka honey in the world, with regulations that require all New Zealand honey exports to meet nectar-testing requirements to confirm its origin. On this basis, the Trust further contended that the use of the name mānuka for honey not derived solely from Leptospermum scoparium tree would be misleading to honey consumers outside of New Zealand.
In considering the UK application, the UK Intellectual Property Office rejected these submissions, finding that nothing about the word mānuka necessarily indicated to the UK public that it exclusively originates from New Zealand.
The Recent IPONZ Rejection
Concurrently, the MHAS filed an application for MANUKA HONEY as a certification mark with IPONZ in 2015, which was formally accepted in 2018 but subsequently met with opposition from the AMHA. Under the Certification Mark rules, MAUKA HONEY could only be used for honey which comprises Manuka Honey according to the laws of New Zealand and which is produced in New Zealand.
Assistant Commissioner Alley rejected the application, finding that MHAS had failed to establish that the trade mark was inherently distinctive under section 18 of the Trade Marks Act 2002.8 Opposition under s 17(1)(a) was also successful, as the certifying of mānuka honey was considered likely to lead to ‘a substantial number of consumers’9 being deceived or confused.
In considering MHAS’s arguments on the taonga status on mānuka as a te reo Māori (Māori language) word, the Commissioner noted that the protection of Māori IP rights were ‘undoubtedly of critical importance’, taking the Wai 262 Report10 into consideration. Nevertheless, she found that while tikanga principles could be considered, they were not binding, and could not override clear provisions of the Trade Marks Act that the Commissioner is required to uphold.11 A brief acknowledgement of Māori’s early use of mānuka for medical and therapeutic purposes was made, but not developed.
On the origins of mānuka honey, the evidence showed a level of collaboration between New Zealand and Australia in discovering its antibacterial properties. While the market flourished in New Zealand with the ideal environment and high quantities of Leptospermum scoparium trees, this did not negate the fact that Australia had shown use of the term manuka by the time of filing of MHAS’ application in 2015. The Commissioner referenced the evidence of production of honey from Leptospermum scoparium trees in Australia under the name mānuka honey.12
The Implications and Future for Mānuka
The Commissioner claimed that this decision would have little impact on the New Zealand honey industry’s current practices, as mānuka honey produced outside New Zealand is already prohibited from being imported into New Zealand due to biosecurity restrictions.13
While the Trust claims to be undeterred by the decision,14 it seems unlikely that mānuka will be considered registrable as a trade mark due to its descriptive nature.
A more suitable resolution would be for the Geographical Indications (GIs) regime to be expanded to cover New Zealand food and beverages in addition to wine and spirits.15 This allows for authenticity of the product to be based on its characteristics derived from the source location, and would have the effect of prohibiting other countries like Australia from using the word mānuka when promoting honey products.
This corresponds with changes as a result of the NZ-EU Free Trade Agreement,16 allowing registration nearly 2,000 EU GIs that cover European products including cheeses, cured meats, honey and oils.17
The expansion on the range of New Zealand produced goods that can be the subject of a GI registration would require legislative change. While protecting the EU GIs the New Zealand government has no current plans to extend the range of protectable NZ GIs. In neglecting to keep our IP legislation up to date NZ traders will be placed at a disadvantage compared with traders from other countries.
As said by Trust Chairman Pita Tipene, the ‘finding reflects the technicalities and limitations of conventional IP law to protect indigenous rights’.18
Gracie Scragg - June 2023
2. Taonga is a precious and treasured possession or resource in Maori culture, referenced in Article 2 of the Treaty of Waitangi.
4. Kaitiakitanga concerns the concept of the Maori role of guardianship of culture and natural resources. It is based on the idea that all life is connected, including the environment, and thus Maori have a duty to protect New Zealand’s natural world and its culture.
5. Above n3.
8. Above n1, at para 480.
9. Above n1, at para 539.
11. Above n1, at para 9.
12. Above n1, at para 543.
13. Above n1, at para 540.
14. Above n3.
