14/09/2021 – Australia-New Zealand: Conflict over a geographical name

trademarks3In July, the Australian Trade Marks Office issued a decision in the Manuka Honey Appellation Society Incorporated v Lawrence Michael Howes . 

The Mānuka Honey Appellation Society Incorporated (MHAS) is a New Zealand society established with the objective of protecting the term ‘Mānuka’ both in New Zealand and in foreign markets, to the benefit of the national honey producers. The word ‘Mānuka’ is the Māori name for the honey derived from the Leptospermum scoparium plant. Such honey has unique qualities in terms of taste as well as medicinal properties. If a sui generis system for agricultural GIs was available in New Zealand, Manuka would probably qualify for recognition, as the Māori name is capable of indicating that the honey has a particular geographical origin. As such system does not exist yet, in New Zealand the MHAS has registered a certification mark.

In 2018, the MHAS had opposed the trademark Application No. 1869737 for the mark “Australian Manuka” (class 30, honey), previously filed in Australia by the local Manuka Honey Association Limited (AMHA). The key argument presented in the opposition, based on Section 43 of the Trade Marks Act 1995, was that the use of the words ‘Australian’ and ‘Manuka’ is inherently contradictory and would lead to confusion in the minds of the public, as it would suggest that the honey covered by the application is produced by bees from L. scoparium in New Zealand. The Australian Trade Marks Office did not agree with this argument. In its decision issued last July, the Office concluded that the use of the word ‘Mānuka’ would be taken in Australian as being concerned with the floral, as opposed to geographical source. As a result, according to the Australian Trade Marks Office, the trademark at issue was unlikely to cause deception or confusion amongst Australian consumers.

Meanwhile, the EU is pursuing the negotiations for the conclusion of a Free Trade Agreement (FTA) with both Australia and New Zealand. These negotiations might lead both countries to establish a sui generis system for the protection of agricultural GIs. Controversies however remain concerning the protection of a number EU GIs in both countries in the context of the FTAs.



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