Member Nura Taefi wins landmark mānuka honey trade mark decision

On 22 May 2023, the Intellectual Property Office of New Zealand released its decision in Manuka Honey Appellation Society Incorporated v Australian Manuka Honey Association Limited [2023] NZIPOTM 19.

In 2015, the applicant succeeded with its application to register MANUKA HONEY as a certification trade mark in New Zealand for honey produced in the country. Registration of the trade mark was opposed by Australian Manuka Honey Association Ltd (AMHA), represented by Shortland Chambers member, Nura Taefi and former Shortland Chambers junior barrister, Rayhan Langdana.  Current and former junior barristers, Pita Roycroft and Jordan Grimmer, also assisted with the case.

In what she described as “a trans-Tasman tussle of extraordinary proportions over trade mark rights for mānuka honey”, Assistant Commissioner Alley allowed the opposition.  Although recognising the cultural significance of mānuka honey and that the plant (and word) is taonga to Māori, the Assistant Commissioner ultimately concluded that MANUKA HONEY was not sufficiently distinctive to be registered as a certification mark in New Zealand under the Trade Marks Act 2002.  Importantly, there was evidence before the Assistant Commissioner that the term “manuka honey” had been used to describe honey produced in Australia prior to the certification mark application being filed.

AMHA succeeded on a number of additional grounds, including that:
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• The draft regulations (which provided for in market spot checks of honey rather than active certification) was unsatisfactory.
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• Use of the certification mark was likely to deceive or confuse a substantial number of persons in New Zealand who may assume there had been some active certification assessment of the honey.
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• Registration of the certification mark would not be in the public interest. The Assistant Commissioner concluded that the public interest in New Zealand meeting its international obligations and the public interest in preventing descriptive terms from being monopolised outweighed any public interest in the mark being registered.

A full copy of the decision can be accessed here
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