The Mānuka Honey Appellation Society Inc (MHAS) had applied in 2015 to register MANUKA HONEY in Aotearoa New Zealand, proposing that the certification would only be used for goods (a) that were manuka honey according to NZ laws and (b) produced in NZ.

The application was opposed by the Australian Manuka Honey Association Ltd (AMHA), primarily on the grounds that MANUKA HONEY was not sufficiently distinctive.

In Manuka Honey Appellation Society Inc v Australian Manuka Honey Association Ltd [2023] NZIPOTM 19 the Assistant Commissioner described it as “one of the most complex and long running proceedings” to have come before the IPONZ.

The main findings were:

MANUKA HONEY lacked inherent distinctiveness because it only described the product name of the goods that MHAS wanted to certify.

MANUKA HONEY lacked acquired distinctiveness by the date of the MHAS application. Evidence had not established that the proposed mark meant the honey must have come from NZ. It was also not established that the average NZ consumer would understand manuka (with no macron) to be a plant exclusively from NZ. The absence of a macron in MANUKA HONEY did not assist MHAS’s claim.

Background facts

• The honey is produced from the nectar of the plant with the botanical name Leptospermum scoparium, which is native to both Aotearoa NZ and parts of Australia.
• Mānuka (with a macron) is a te reo Māori kupu (Māori word). The kupu and the plant are regarded as taonga by Māori, who used the plant for medicinal purposes.
• Manuka (without a macron) is a word that was adopted into the English language as early as 1839.
• Research by a scientist in NZ in 1987 created international interest in the antibacterial properties of the honey.
• Honey from L. scoparium has been produced in Australia and was marketed as ‘manuka honey’ for many years before the MHAS application.