Australia Comes out on Top of New Zealand in Manuka Honey Trademark Dispute

Read More

New Zealand has lost a trans-Tasman battle after a bid to trademark the term “manuka honey” was rejected by the New Zealand Intellectual Property Office (NZIPO).

The Manuka Honey Appellation Society (MHAS), with NZ$6 million (US$3.8 million) in support from the central government, has tried for almost a decade to trademark the term “manuka honey” to refer to those that are produced in New Zealand solely.

They argue that the word manuka is an English loan word adopted from the Maori word mānuka and therefore was in New Zealand’s interests to own the trademark.

On the other side, the Australian Manuka Honey Association (AMHA) has opposed this move, saying that the manuka honey products made in Australia are also genuine.

“This case represents a trans-Tasman tussle of extraordinary proportions over trademark rights for mānuka honey. It is one of the most complex and long-running proceedings to have come before the Intellectual Property Office of New Zealand,” the ruling reads.

Manuka honey is the “queen of healthful honey,” famous for its anti-fungal, anti-inflammatory, and antioxidant properties. It is made by bees that pollinate the manuka plant (Leptospermum scoparium).

While the manuka plant is well known as being native to New Zealand, it is also native to Australia and is particularly widespread in Tasmania.

“In fact, some scientists consider that Leptospermum scoparium originated in Australia and migrated across the Tasman Sea to Aotearoa, New Zealand,” the commissioner said.

This picture taken on April 20, 2021, shows a Leptospermum scoparium tree, commonly called manuka, at an apiary in the town of Somersby in New South Wales, Australia. (Gregory Plesse/AFP via Getty Images)

The AMHA acknowledged that “mānuka,” written with a macron, is a Maori word but argued that trademarking a descriptive term would lead to a false representation that manuka honey only comes from New Zealand.

Importantly, the MHAS application specifically aims to trademark “manuka honey” without the macron.

But the ruling said that manuka is “undoubtedly” a descriptive term that indicated honey made from the manuka plant, which is native to both countries. Therefore, regardless of the origins of the term, it lacks enough distinctiveness to warrant a trademark.

The NZIPO commissioner said while the New Zealand manuka honey industry had been ahead of its Australian counterpart early on, that did not mean that the branding of manuka honey by Australian companies was false.

“Savvy marketing by Australian honey producers does not equate to dishonest trading on their part. Nor does it justify registration of a purely descriptive word MHAS as a certification mark in New Zealand,” the ruling said.

“This is a case of an organisation representing some, albeit a large number, of New Zealand honey producers, claiming exclusive use of the term “manuka honey” for honey from Aotearoa [New Zealand] despite clear use of that term to describe such honey produced in Australia prior to the certification mark application being filed.”

The Mānuka Charitable Trust was disappointed by the ruling, saying it reflected the limitations of IP laws to “protect Indigenous rights.”

“We remain resolute in protecting our reo Māori (language) and the precious taonga (treasure), and today’s ruling in no way deters us. If anything, it has made us more determined to protect what is ours on behalf of all New Zealanders and consumers who value authenticity,” said Pita Tipene, Chair of the Manuka Charitable Trust.

He said that industry partners remained “steadfast” in their view that it was not appropriate for other countries to use the name “mānuka honey” (with the macron) if the nectar came from a plant not grown in New Zealand.

A honey bee prods flowers for nectar in an urban garden in the city centre in Berlin, Germany, on Aug. 9, 2018. (Sean Gallup/Getty Images)

Meanwhile, AMHA chairman Ben McKee said Australian manuka honey producers were delighted at the “sensible decision.”

“Our product has a long history of being recognised as Manuka honey, it is produced like the NZ product is, and it also offers the sought-after antimicrobial properties that consumers around the world value so highly,” he said.

“This decision is a sensible outcome that ensures Aussie beekeepers can fairly market their produce.

“It also sees NZ following other precedents around the world that Manuka honey is a descriptive term.”

McKee noted that aside from the group of producers that spearheaded the trademark move, there are others in the New Zealand honey industry that are prepared to work collaboratively with the Australian industry.

“The fact that even authorities in New Zealand cannot find a way to support the trademark claims of NZ producers should, we hope, bring this legal dispute to an end once and for all.”

The ruling follows similar legal proceedings made in the United Kingdom and European Union.

In 2016, the UK accepted the MHAS’s registration of the certification mark “manuka honey,” a decision that was later overturned by the UK Intellectual Property Office following an appeal by the AMHA.

In 2017, the registration of manuka honey also appeared before the EU Intellectual Property Office but was rejected.

The MHAS appealed both decisions, which was withdrawn in January this year—a “sweet win,” AMHA said.