The Government's $6 million support for Kiwi mānuka honey producers' legal case is for nought as the trademark bid is defeated in a critical local ruling
New Zealand's trademarks commissioner has refused an iwi-backed bid by Kiwi honey producers to trademark the term "mānuka honey".
In a "finely balanced" ruling, Assistant Commissioner Natasha Alley has found that the term was not sufficiently inherently distinct for any one group or company to own it.
"It consists only of a sign that serves in trade to designate a characteristic of the goods, namely that it is honey produced from the nectar of the Leptospermum scoparium plant, commonly known as manuka," she finds. "It simply describes the product name of the goods."
READ MORE: * Inferior overseas honey being passed off as mānuka * Mānuka honey dispute: What's in a macron? * Lockdown protracts fight to protect mānuka honey as Kiwi
The decision could be the final nail in the coffin of long-running legal attempts to take control of the lucrative brand, in what would have been an internationally unprecedented step.
"This case represents a trans-Tasman tussle of extraordinary proportions over trade mark rights for mānuka honey," Alley says in her ruling. "It is one of the most complex and long running proceedings to have come before the Intellectual Property Office of New Zealand."
While there is precedent for claiming ownership rights to regional names – like France's Champagne or Italy's Parmigiano – it would have been another matter to use the name of a species (mānuka, or Leptospermum scoparium) in a trademark.
"A great day for common sense." – Harvey Bell, Australian Manuka Honey Association
The ruling notes that the plant is native to both New Zealand and Australia. "In fact, some scientists consider that Leptospermum scoparium originated in Australia, and migrated across the Tasman Sea to Aotearoa New Zealand."
The Australian Manuka Honey Association, which has opposed New Zealand bids to trademark the name, was jubilant on Monday morning. "A great day for common sense," said Harvey Bell, a New Zealand representative for the association.
They had already successfully opposed attempts by New Zealand's Mānuka Honey Appellation Society to assert ownership through legal tussles in the UK and China. Other trademark regulators, most notably in the valuable US market, have been holding back awaiting the New Zealand decision.
"On the evidence before me it is clear that Australia’s manuka honey industry developed much later than the New Zealand mānuka honey industry," Alley rules. "However, that does not mean that a New Zealand association, such as Mānuka Honey Appellation Society, should be able to monopolise use of a wholly descriptive term."
The New Zealand Government has poured nearly $6 million into the failed eight-year campaign, and last year bypassed intellectual property tribunals to win protection for the term “mānuka” in its European Union trade deal, with separate tariff conditions that recognise the brand’s value as taonga exclusively sourced from New Zealand.
"The public interest in preventing descriptive terms being monopolised outweighs any public interest in the certification mark being registered." – NZ trademarks commissioner
Newsroom has asked Primary Industries Minister Damien O'Connor whether the Government will provide further support to appeal the decision, or will decline to send good money after bad.
The Australian producers said geographical indications were internationally recognised mechanisms for groups of producers to protect the geographical specificity of products in particular circumstances, but the term "mānuka honey" could never be a geographical indication because it does not include any word that identifies a geographical place.
"Ultimately," the ruling says, "the public interest in New Zealand meeting its international obligations, and the public interest in preventing descriptive terms being monopolised, outweigh any public interest in the certification mark being registered."
The commissioner does observe, in her ruling, that just as the overseas rulings did not determine the New Zealand legal status, similarly the New Zealand ruling would be of limited international influence. "Every case will depend very much on the circumstances in the country where registration is sought."
"It is disappointing in so many ways, but our role as kaitiaki to protect the mana, mauri, and value of our taonga species, including Mānuka on behalf of all New Zealanders is not contestable." – Pita Tipene, Mānuka Charitable Trust.
The commissioner's ruling acknowledges that Māori had long recognised the medicinal and therapeutic uses of mānuka.
The late Professor Peter Molan, of Waikato University, was the first to report the unusual activity of manuka honey and began testing its action against a wide range of different bacterial species in the 1980s.
"The story that emerges, from the many volumes of evidence, is that there was at least some cooperation between the New Zealand and Australian honey industries in the early days after the discovery of the antibacterial properties of mānuka honey," the commissioner finds.
"There is no doubt that the New Zealand mānuka honey industry was more advanced than Australia’s nascent manuka honey industry early on. This may be due to monofloral Leptospermum scoparium honey being produced in relatively small quantities and only in some parts of Australia compared with the thriving industry around New Zealand."
She adds: "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 by Mānuka Honey Appellation Society as a certification mark in New Zealand."
The New Zealand claimants had argued that because "mānuka" was originally a Māori word, it was appropriate for the trademark to be owned by New Zealand interests. But the commissioner disagreed.
She agreed that mānuka was a te reo Māori kupu (word) that was regarded as taonga by Māori, but she said it had been used for many years in the English language of both New Zealand and Australia. "Manuka is an English loanword, meaning it has been adopted into the English language from te reo Māori," she explained. "Tikanga principles are relevant, but cannot override clear provisions in the Trade Marks Act, which I am required to apply."
One of the debates was over whether New Zealand could retain ownership of "mānuka honey" with a macron, while other countries – specifically Australia, which claims its own manuka species by that name – could all share the term "manuka honey" without a macron.
But the trademark commissioner's ruling also seems to extinguish that path for the New Zealand producers, by rejecting any exclusive rights to the macronised "mānuka honey" name.
"Unsurprisingly, both New Zealand and Australian honey producers will be motivated, at least to a significant extent, by commercial considerations," the ruling says. "Naturally, they will also want to communicate with consumers using descriptive terms they are familiar with.
"The Mānuka Honey Appellation Society considers that it is in the public interest of all New Zealanders, deriving from the taonga status of Mānuka, to preserve the alleged guarantee currently present in the term Mānuka Honey that honey designated by that term in trade is from the nectar of Leptospermum scoparium and is produced in New Zealand."
But, the ruling adds, the Māori Language Commission considers there is a public interest in the correct spelling of mānuka being used in relation to honey – so registration of the term Manuka Honey, without the macron, could be interpreted as perpetuating the incorrect spelling of the Māori word mānuka.
"I am not convinced that allowing one association (that represents most but not all mānuka honey producers in New Zealand) ownership of a certification mark that gives it a monopoly over the use of a descriptive word with Māori origins, to the exclusion of others including potentially some Māori honey producers, is consistent with tikanga principles, such as kaitiakitanga, or protecting the te reo Māori word mānuka."
Part of the argument has been over whether the creation of a Mānuka Charitable Trust to progress the legal claim was genuinely representative of Māoridom. Bell, a financial analyst and chair of the Waipakuranui Māori Land Incorporation, identifies as Ngāti Ruaka and Ngāti Rangi and has rejected the late assertion of an iwi interest as a somewhat cynical ploy by corporate producers.
The trademarks commissioner doesn't rule on whether the Mānuka Honey Appellation Society, which lodged the original application, and the Mānuka Charitable Trust it subsequently helped set up, could legitimately assert ownership. But she does observe that Australian Manuka Honey Association made "some cogent arguments" against those organisations' ownership status.
This morning, the Mānuka Charitable Trust and members of the local honey industry said they were disappointed, but undeterred, by the ruling from the Intellectual Property Office upholding opposition from Australian honey industry interests. “Today’s finding reflects the technicalities and limitations of conventional IP law to protect indigenous rights," said Pita Tipene, chair of the Mānuka Charitable Trust.
"It is disappointing in so many ways, but our role as kaitiaki to protect the mana, mauri, and value of our taonga species, including Mānuka on behalf of all New Zealanders is not contestable.
“We remain resolute in protecting our reo Māori and the precious taonga and today’s ruling in no way deters us," Tipene added. "If anything, it has made us more determined to protect what is ours on behalf of all New Zealanders and consumers who value authenticity. We will take some time to absorb the details of the ruling and consider our next steps."
