This trade mark stoush is as sweet as honey!

By Brett Doyle and Dunja Poljak
02 Sep 2021
The concern for the Australian honey industry is that should MHAS achieve registration in key markets, Australian honey exporters could be prevented from using manuka honey on their products.

The contest over who can use Manuka for their honey products shows no signs of being resolved any time soon.

New Zealand bee beekeepers – Manuka Honey Appellation Society Incorporated – (MHAS) opposed registration of the following trade mark containing the words "Australian Manuka"  arguing that "manuka" indicates (connotes) honey from New Zealand and so the trade mark contained a false connotation in breach of section 43 of the Trade Marks Act.

Manuka image

"Manuka" is the Maori word for Leptospermum scoparium ("L. scoparium"), a tea tree species native to both Australia and New Zealand. Manuka honey has antibacterial qualities. Evidence established that "manuka honey" was widely used in New Zealand as early as the 1880s to indicate honey from bees harvesting pollen from the species L. scoparium. For this same purpose "manuka" had been used in Tasmania from the 1880s and more generally in Australia since at least the 1930s. The evidence also showed that the New Zealand Ministry of Primary Industries defined Manuka honey to include "Australian Manuka". "Manuka" also appears in a range of place names in Australia the most well-known being the Canberra suburb, Manuka.

The Registrar's delegate agreed with the Applicant, deciding that MHAS did not make out the ground of opposition under section 43 nor the grounds under 60 (likely to deceive or cause confusion) or 42b (contrary to law). MHAS has appealed this decision to the Federal Court.

This opposition is one skirmish in a larger dispute between Australian and New Zealand honey producers over the use of "Manuka" in relation to honey. In 2019, the New Zealand government granted $5.7 million to assist MHAS in its bid to secure international rights in Manuka.

In Australia, The Australian Honey Bee Industry Council is the peak industry body for the Australian beekeeping industry. It represents honey producers, packers, pollinators, queen bee breeders and equipment manufacturers and suppliers in Australia. It has recently funded the Australian Manuka Honey Association to assist in its objectives of protecting and promoting the global appeal and awareness of Australian Manuka honey.

MHAS has also opposed the application for this mark

Manuka image

in the name of Bee-Power International Pty Ltd, a company based in Mudgee.

Certification marks

MHAS has filed applications for registration of MANUKA HONEY as a certification trade mark in New Zealand and various countries, including Australia, USA, UK, EU, Singapore and China. The Australian application has lapsed; the UK application is under opposition by a number of entities, including the Australian Manuka Honey Association Ltd; the European application was refused based on the descriptive and non-distinctive character of the mark and an appeal is yet to be determined. The US and Singapore applications are still pending and we were unable to determine the status of the application in China.

In New Zealand, the certification mark MANUKA HONEY, Application No 1025914 filed on 18 August 2015, is not registered. MHAS overcame objections based on its descriptive and non-distinctive character, with the Assistant Commissioner of Trade Marks eventually accepting that for New Zealand consumers MANUKA HONEY indicates L. scoparium honey produced in New Zealand, distinguishable from honey produced elsewhere. The Australian Manuka Honey Association has opposed the registration in New Zealand and the hearing date has been set for 18 August 2021.

Australia’s manuka honey industry is a worth over $100 million, with significant exports, including to Asia. The concern for the Australian honey industry is that should MHAS achieve registration in key markets, Australian honey exporters could be prevented from using manuka honey on their products. Of particular concern would be China where registration has been sought.

We will report further when developments as they arise.

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.