The Manuka Honey Appellation Society of New Zealand recently withdrew its High Court appeal against the UK Intellectual Property Office decision to refuse an application to register the certification trade mark “Manuka Honey” in a win for Australian Manuka honey producers.
In December 2017, the UK Intellectual Property Office (UKIPO) accepted a certification trade mark for “Manuka Honey” for registration. That trade mark was subsequently assigned to The Manuka Honey Appellation Society Incorporated (Applicant).
A certification trade mark differs from a standard trade mark as it distinguishes goods or services dealt with in trade and certified by the owner of the trade mark or approved certifier, from goods or services which are not certified. A certification trade mark certifies and guarantees that the goods bearing the trade mark possess particular characteristics such as:
The Australian Manuka Honey Association Ltd (Opponent) opposed the registration of the certification trade mark under Section 3(1)(b)(c) and (d) of the Trade Marks Act 1994 (United Kingdom) on the basis that:
The Opponent was concerned that due to widespread use of the word Manuka on both sides of the Tasman, granting trade mark protection would provide an unfair monopoly to New Zealand because the certification requirements would mean the Manuka Honey mark could only be applied to products in the UK which were produced in New Zealand.
The Applicant argued that the term “Manuka” is not a common English name or a common name for the plant leptospermum scoparium. Further, the Applicant argued that the mark qualified as a certification trade mark and was capable of distinguishing honey produced in New Zealand from the leptospermum scoparium plant from its overseas counterparts.
The UKIPO refused the applicant’s mark on the basis that it did not meet the requirements of a certification mark because the mark lacks an inherent capacity to distinguish its honey certified goods from those of other non-certified goods.
The UKIPO acknowledged that the word “Mānuka” is originally a Maori word and determined the word has become anglicised by removal of the macron. As the word now forms part of the English language with dictionary meanings, the UK public would perceive Manuka as a purely descriptive term for honey and not a Maori word.
Considering the evidence, the UKIPO found it is common practice in the honey industry to produce a label in the format where the brand is alongside the type of honey as in the following examples:
The UKIPO therefore held that Manuka honey has become a descriptive term to indicate a type of honey, rather than function as a trade mark. They also found there was insufficient use of Manuka honey as a certification mark to demonstrate that Manuka honey exclusively originates from New Zealand, other than what was indicated on packaging and therefore the trade mark is not inherently capable of distinguishing its honey certified goods from honey that is not certified.
The UKIPO refused registration of the certification mark for Manuka Honey and awarded costs in favour of Australian Manuka Honey Association Ltd.
The decision emphasised that whether a non-distinctive mark has acquired distinctiveness as a certification mark depends on whether the mark is perceived as indicating certification or ‘officialness’ in the minds of the public. That is, a mark is either inherently distinctive or consumers have been educated to recognise that the sign indicates that goods are certified. The ‘Heart Foundation Tick Logo’ and ‘Made in Australia Logo’ are well-known examples of certification marks in Australia.
For further reading on this decision see here.