Government’s $6 million in aid to kiwi manuka honey producer lawsuit wasted after trademark bid lost in key district judgment
A New Zealand Trademark Commissioner rejected an iwi-backed bid by kiwi honey producers to trademark the term ‘manuka honey’.
Assistant Secretary Natasha Alley found in a “finely balanced” ruling that the term is not inherently clear enough for any particular group or company to own it.
“It consists only of a trade-friendly symbol that indicates the product’s characteristic: honey made from the nectar of the Leptospermum scoparium plant, commonly known as manuka,” she found. It only lists the product name of the product.
The decision could be the final nail in the coffin of years of legal attempts to gain control of profitable brands and could be an unprecedented move internationally.
“This lawsuit represents an extraordinary scale of dispute beyond Tasman over the trademark rights to manuka honey,” Alley said in his ruling. “This is one of the most complex and long-running cases ever before the New Zealand Intellectual Property Office.”
While there are precedents for claiming ownership of regional names, such as Champagne in France and Parmigiano in Italy, using the name of the species (Manuka or Leptospermum scoparium) as a trademark would have been another matter.
“It’s 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 believe that Leptospermum scoparium originated in Australia and migrated across the Tasman Sea to Aotearoa in New Zealand.”
The Australian Manuka Honey Association, which has opposed New Zealand’s bid to trademark the name, celebrated Monday morning. “It’s a great day to think about common sense,” said Harvey Bell, the association’s New Zealand representative.
They had already successfully defeated New Zealand’s Manuka Honey Naming Society’s attempts to claim ownership through legal battles in the UK and China. Other trademark regulators, especially in the valuable US market, are awaiting New Zealand’s decision.
“The evidence in front of me clearly shows that the Australian manuka industry developed much later than the New Zealand manuka industry,” Alley states. “But that doesn’t mean that New Zealand bodies like the Manuka Honey Names Association should be able to monopolize the use of entirely descriptive terms.”
The New Zealand government spent nearly $6 million on an unsuccessful eight-year campaign, and last year evaded an intellectual property court to sign a “manuka” in a European Union trade agreement with separate tariff terms that recognize the value of brands. has won protection for the term Taonga is only sourced from New Zealand.
“The public interest in preventing monopoly of descriptive terms outweighs any public interest in certification marks being registered.”
– NZ Trademark Commissioner
The Newsroom asked Minister of Primary Industries Damien O’Connor whether the government would offer further help to appeal the decision or refuse to send good money after bad results.
Australian producers say that although GI is an internationally recognized mechanism for producer groups to protect the geographical specificity of their products under certain circumstances, the term ‘manuka honey’ does not include He said it could never be a geographical indication because it does not contain words that specify a geographical location. .
The ruling said, “In the end, the public interest in New Zealand’s compliance with its international obligations and the public interest in preventing descriptive monopoly outweigh any public interest in the certification mark being registered. “It has said.
In his ruling, the Commissioner said that just as foreign rulings did not determine New Zealand’s legal status, the international impact of the New Zealand ruling was limited. “Every case is highly dependent on the circumstances of the country in which registration is sought.”
“Disappointing in many respects, Kaitiaki’s role in defending the mana, mauri and values of the Taonga species, including Manuka, on behalf of all New Zealanders is undisputed.”
– Pita Tipene, Manuka Charitable Trust.
The Chief’s ruling acknowledges that Maori have long recognized the medical and therapeutic uses of manuka.
The late Professor Peter Moran of the University of Waikato first reported the unusual activity of manuka honey and began testing its action against various bacterial species in the 1980s.
“A large body of evidence emerges that there was at least some degree of collaboration between the New Zealand and Australian honey industries in the early days after the discovery of manuka honey’s antibacterial properties,” he said. bottom.
“There is no doubt that the New Zealand manuka honey industry was more advanced than the early Australian manuka honey industry. and may be because it was only produced in some parts of Australia compared to the thriving manuka honey industry around New Zealand. ”
She added, “Wise marketing by Australian honey producers does not equate to dishonest trading on their part. And it is a purely descriptive word by the Manuka Honey Names Association registered as a New Zealand certification mark.” It does not justify doing so.”
New Zealand plaintiffs argued that because “Manuka” was originally Māori, it was appropriate for New Zealand interests to own the trademark. But the chairman disagreed.
She agreed that Manuka is a te reo Maori kupu (word) considered taonga by the Maori, but said it has been used in both New Zealand and Australian English for many years. “Manuka is a loanword from English, meaning it was taken into English from Te Reo Maori,” she explained. “While the Tikanga doctrine is relevant, it cannot override a clear provision of trademark law and I must apply it.”
One of the debates is whether New Zealand can retain ownership of “manuka honey” with macron, with other countries, particularly Australia, which claims its own manuka variety in that name, all “without macron”. It was whether we could share the term ‘manuka honey’. .
But the Trademark Board’s ruling also appears to set New Zealand producers out of the way by denying them exclusive rights to the capitalized ‘manuka honey’ name.
“Naturally, honey producers in New Zealand and Australia will be motivated, at least to a large extent, by commercial considerations,” the ruling said. “Naturally, they will want to communicate with consumers using familiar descriptive terms.
“The Manuka Honey Approval Society maintains the assurance, which derives from Manuka’s taonga status and now exists in the term Manuka honey, that the honey designated in trade by that term originated in New Zealand. We believe that this is in the public interest of all New Zealanders.The nectar of Leptospermum scoparium is produced in New Zealand.”
However, the Māori Language Commission believes there is a public interest in the correct spelling of manuka being used in connection with honey, the ruling added. Therefore, registering the term manuka honey without macrons could be interpreted as perpetuating the misspelling of manuka honey. Maori Manuka.
“I authorize an entity (representing most, but not all, New Zealand manuka honey producers) to possess a certification mark that grants the exclusive use of descriptive words of Māori origin and: It is unconvincing to exclude other groups such as potentially some Māori honey producers who use Tikanga principles such as Kaitiakitanga, or Māori Te Reo Māori Manuka I believe we are protecting the
Part of the debate was whether the creation of the Manuka Charitable Trust to advance legal claims was truly representative of the Maoridom. Mr. Bell, a financial analyst and chairman of the Waipakuranui Maori Land Corporation, has cited Gertie Ruaka and Gertie Rangi as a somewhat cynical ploy by corporate producers to claim the iwi stake late. denied as
The Trademark Commission has not ruled on whether the Manuka Honey Names Society, which filed the original application, and the Manuka Charitable Trust, which it later helped establish, can legally claim ownership. But she observes that the Australian Manuka Honey Association has made “some compelling arguments” for the ownership status of those organizations.
This morning members of the Manuka Charitable Trust and the local honey industry said they were disappointed but not deterred by the Intellectual Property Office’s ruling in favor of opposing Australian honey industry interests.
“Today’s findings reflect the expertise and limitations of traditional intellectual property law to protect the rights of indigenous peoples,” said Pita Tipene, chairman of the Manuka Charitable Trust.
“Despite it in many ways, our role as Kaitiaki in defending the mana, mauri and values of the Taonga species, including Manuka, on behalf of all New Zealanders is indisputable.
“We remain steadfast in protecting our Leo Maori and our precious Taonga, and today’s ruling will in no way deter us,” added Tipene. “Rather, we are more determined to protect what is ours on behalf of all New Zealanders and consumers.” We will take the time to absorb the details of the ruling and consider our next steps. ”
https://www.newsroom.co.nz/manuka-honey-decision Trademark Board Rejects Government-backed ‘Manuka Honey’ Possession Bid