Manuka Honey trademark case in NZ underscores challenges related to “distinctiveness”

The decision of the Intellectual Property Office of New Zealand (IPONZ) in Manuka Honey Appellation Society v. Australian Manuka Honey Associationon May 22, 2023, underscored the challenges involved in proving or disproving a mark’s distinctiveness, according to Nadia Ormiston, senior associate at Dentons Kensington Swan in Auckland.

In the latest chapter of the long-standing trademark feud over the Manuka Honey name between New Zealand and Australia, IPONZ upheld the Australian Manuka Honey Association’s opposition to the Manuka Honey Appellation Society’s (MHAS) bid to register Manuka Honey as a certification trademark in New Zealand.

MHAS is an organization in New Zealand funded by its government to secure trademark registration for Manuka Honey worldwide. The group asserted that Manuka Honey was originally from New Zealand.

However, according to IPONZ, the term mānuka is descriptive. Hence, it cannot be registered as a certification trademark.

Ormiston said that the decision emphasized the challenge of proving acquired distinctiveness for terms considered purely descriptive and the importance in presenting evidence regarding how the relevant public perceives a mark at the time of filing, as it played a crucial role in demonstrating that the Manuka Honey mark lacked distinctiveness.

She added: “It also highlighted the absence of mechanisms in New Zealand trademark law to acknowledge any elevated distinctiveness of marks based on Māori signs, indicating a conflict between tikanga principles and the legal framework.”

Tikanga is a Maori concept pertaining to customary practices, behaviours and principles. Maori refers to the indigenous Polynesian people of mainland New Zealand.

“Lastly, the approval of the certification trademark ‘Gorgonzola’ in a 2022 decision raises questions about inconsistent treatment of distinctiveness for different marks,” said Ormiston, referring to theConsorzio per la Tutela del FormaggioGorgonzolav. Dairy Companies Associationcase of New Zealand.

She explained that the evidence presented in the Manuka Honey case suggested that New Zealand consumers did not exclusively associate “mānuka honey” with New Zealand. Therefore, the average consumer does not perceive it as distinctive of New Zealand-produced honey. This further demonstrates that the IP Office placed significance on the perception of the mark by the relevant public at the time of filing.

In December 2021, the UK Intellectual Property Office and IP Australia also rejected MHAS’s application to register Manuka Honey as a trademark.