News & Insights

People can be very protective of their country’s iconic products. Especially when the name comes from their own language.

The word “manuka” is the Māori name for the manuka tree, leptospermum scoparium, which is native to Australia and New Zealand. Honey derived from that tree is viscous, dark in colour and highly prized. The global market for the stuff is about AU$1.15 billion annually.

So, it is little wonder that New Zealand’s Manuka Honey Appellation Society (MHAS) has sought to claim the “manuka” term solely for New Zealand producers of the sweet stuff, not just in New Zealand but internationally.

Certification trade marks

Trade marks normally function as a means of distinguishing one producer’s goods and services from those of other producers.

However, there is a special type of trade mark: certification trade marks. They distinguish goods or services that have been certified in relation to quality, accuracy, or some other characteristic such as origin, material, or mode of manufacture, from those goods or services that are not certified.

The MHAS had sought to register “MANUKA HONEY” as a certification trade mark in jurisdictions including New Zealand, Australia, the USA, UK and the EU.

This has not impressed Australian producers of manuka honey, with the Australian Manuka Honey Association Ltd (AMHA) stepping in to try to protect their rights.

Recent events in UK and EU

The UK application to register “MANUKA HONEY” as a certification mark was initially accepted by the UK Intellectual Property Office (UKIPO). It was then opposed by AMHA. On 13 December 2021, the UKIPO upheld AMHA’s opposition.

The UKIPO held that “MANUKA HONEY” is not inherently capable of indicating honey that has been certified from honey that has not been certified. This is because:

• “MANUKA HONEY” has historically been used on a wider range of products than what MHAS would be certifying (ie it had been used on Australian honey, while MHAS would only be certifying New Zealand honey); and
• “MANUKA HONEY” is not presented in a manner that suggests certification (eg “Certified Manuka Honey”);
• dictionary definitions and public understanding show “MANUKA HONEY” as being understood to be a descriptive term;
• even though “Manuka” is a Māori word, it has nevertheless entered the English language as a descriptive word;
• there is no evidence that the public understands Manuka honey to be exclusively from New Zealand.

The MHAS’s case was not helped by evidence of significant use of “Manuka Honey” within the taxonomy of “[Brand] [Type] Honey”, which reinforced its descriptive character.

The UKIPO’s decision also referenced an earlier decision of the European Union Intellectual Property Office (EUIPO) refusing registration of “MANUKA HONEY”, which stated that:

• A sign that contains information about the characteristics of goods can still qualify as a trade mark when they are presented in an original or imaginative manner. That was not the case with “MANUKA HONEY”.
• “MANUKA HONEY” has a clear descriptive meaning and “the EUIPO cannot grant exclusive right to a use a commonly used expression … without any alteration, to one market operator.” Further, “even if, due to its specific function, the certification mark can give information about the characteristic it certifies, it cannot be exclusively descriptive of a characteristic of the goods it aims to certify.”

In addition to finding that “MANUKA HONEY” lacked inherent distinctiveness, the UKIPO also determined that it had not acquired distinctiveness through use.

The MHAS appealed the UKIPO’s decision in the opposition proceedings to the England and Wales High Court. It has now been reported that the MHAS has withdrawn that appeal and is no longer pursuing registration in the UK or EU.

What has happened elsewhere?

Rejection in Australia

The MHAS applied to register “MANUKA HONEY” as a certification trade mark in Australia in 2016. The application was not accepted by IP Australia and lapsed.

Another New Zealand body, Manuka Charitable Trust, applied on 4 October 2022 to register the same certification trade mark. That application is yet to be examined.

Current opposition in NZ

The New Zealand trade mark application, lodged on 18 August 2015, is currently opposed by AMHA. That opposition is ongoing.

Current application in the USA

The MHAS applied to register “MANUKA HONEY” as a certification mark in 2016. That application is currently suspended. The US application relied on the New Zealand application as the basis of filing; until the New Zealand trade mark is registered, the US trade mark cannot be accepted unless the basis of filing is changed.

At this point we do not know whether the MHAS will change its basis of filling (which it can do), whether it can then succeed under one of the other bases, and if so whether the application will be opposed by the AMHA.

Take-away points

A few lessons come from these decisions:

1. To be able to fulfil their role and be registrable, trade marks must be distinctive.
2. Certification trade marks must be more than purely descriptive. While they can refer to the quality being certified, they need to be more than just that descriptive term.
3. Evidence is key to understanding how terms are understood in the market, whether that is purely descriptive or not. This means that the outcome can vary between countries.
4. A good certification trade mark should convey an “officialness”, some indication that it indicates certification.

In Australia, New Zealand and many other countries, registration of a certification trade mark requires not just a trade mark application but also accompanying certification rules, which in Australia must be approved by the ACCC.

The Macpherson Kelley IP team has extensive experience with the entire process of implementing a certification system and guiding the certification mark through to registration.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.