IP Australia tells New Zealand to "buzz off"
Manuka honey is big business. Produced in New Zealand and Australia from the manuka tree, the honey is sold around the world for a high price. It comes as no surprise that counterfeit manuka honey products plague global supply, potentially harming the manuka honey name.
Realising the importance of the name, the Manuka Honey Appellation Society Inc (MHAS), a New Zealand entity composed of various New Zealand manuka honey producers, sought to gain greater control over the name by filing a certification trade mark for “Manuka Honey”. If successful, Australian producers would be prevented from labelling their honey as “manuka honey”, damaging their ability to capture the lucrative international market.
Despite the MHAS’s valiant attempts, the application ultimately failed, lapsing in August 2017.
A trade mark grants its owner exclusive rights to use a sign (as a trade mark) in relation to specific goods and/or services.
A certification mark, however, indicates that a product displaying the trade mark meets a specific standard of quality or manufacturing method.
The “Australian Made” logo, comprising a kangaroo in a triangle device, is a well-known example of a certification mark owned by the Australian Government to certify that a product is Australian made.
When a certification mark is filed, the owner is required to provide the rules, pursuant to which a product must abide in order to lawfully display that certification mark.
If a product does not meet the standards required by that certification mark, it cannot then display that certification mark.
The “Manuka Honey” certification mark failed as it was a descriptive term, not capable of distinguishing a product from those of other traders. As manuka honey is made from the manuka plant, the phrase merely describes the type of honey. IP Australia determined that it would be inappropriate to grant MHAS a monopoly over “Manuka Honey”, particularly where other manuka honey producers (including those in Australia) would need to use the term. Therefore, MHAS was unable to register the certification mark – much to the relief of Australian manuka honey producers.
A name or brand is often a business’ most valuable asset. Where the opportunity presents itself to secure a trade mark over a valuable name or brand, steps should be taken to file a trade mark application. However, a party must always consider whether its name or brand is capable of being registered under Australia trade mark law, that is, does the name and/or brand distinguish the goods and/or services from those of other traders?
However, applications that are doomed to fail, such as the “Manuka Honey” certification mark, are a waste of a business’ valuable time and money.
Should you require assistance or advice regarding your business’ trade marks and branding, do not hesitate to contact Iain Freeman or Andrew Sutton.