Manuka Honey - No end to the sticky situation

What you need to know

• New Zealand honey producers have failed to secure a certification trade mark registration in the United Kingdom for "Manuka Honey".
• The trade mark registration was opposed by the Australian Manuka Honey Association on the grounds that the honey is native to both Australia and New Zealand.
• Disputes over the trade mark are continuing in other jurisdictions.

In our November 2019 Food Law Update we told you about disputes in several key international jurisdictions between Australian and New Zealand honey producers regarding registration of "Manuka honey" as a trade mark. Since that edition, the UK dispute has been resolved with the United Kingdom International Property Office (UKIPO) recently refusing an application by New Zealand-based Manuka Honey Appellation Society Incorporated to protect the certification trade mark "Manuka Honey".

The application was opposed by the Australian Manuka Honey Association Ltd, and local honey manufacturer, Valeo Foods UK Limited that had been trading under the brands ROWSE MANUKA and ROWSE MANUKA HONEY. Extensive evidence was filed by the parties and a two-day hearing took place in September 2021. Witnesses in the proceedings included industry experts, beekeepers, scientists, and a Maori language expert.

The NZ applicant argued that “Manuka” is not a common name in English in the UK, and that the applicant’s mark was capable of distinguishing honey made in New Zealand from the nectar of the leptospermum scoparium plant from any honey made outside of New Zealand.

While the UKIPO accepted that Manuka was Maori in origin, it nevertheless found that Manuka had entered the English language as a descriptive word, and that the UK public did not understand Manuka honey to originate exclusively from New Zealand. Costs were awarded in favour of the Australian association.

Attempts to register "Manuka Honey" as a certification trade mark have failed in Australia, Europe, China, the United States, and now the UK. A three-day hearing in the opposition filed by the Australian Manuka Honey Association against the certification mark application in New Zealand was held in October 2021, and judgment in that matter is expected soon. The decision of the Board of Appeal of the European IP Office in October 2021 summed up the problem being faced by the New Zealand applicant:

From the perspective of the English-speaking public, the term ‘Manuka honey’ simply refers to a type of honey, like ‘Dandelion honey’, ‘Pinetree honey’ or ‘Acacia honey’. As a purely generic indication, it does not fulfil the primary function of a certification mark, namely to distinguish certified honey from honey which is not so certified.

Authors: Kellech Smith, Partner and Carrick Brough, Senior Associate.