Manuka honey producers face trademark law sting: Intellectual Property Law Update

The Australian Manuka Honey Association has opposed the push from New Zealand honey producers to trademark Manuka honey. The Association was created last month at a meeting in Melbourne, and is being backed by big industry players including Australia’s largest producer Capilano. Manuka honey is known for its antibacterial properties and touted as a ‘superfood’ which can do everything form healing sore throats to curing gingivitis. This reputation has led to the rapid growth of a lucrative global market for manuka honey, as consumers are willing to pay premium prices for the honey’s many claimed benefits.

New Zealand honey makers have claimed that they are entitled to the international rights to “Manuka” as the term is the name given to the tree by the country’s indigenous Maori people. They argue that genuine manuka honey is sourced from the nectar of Leptospermum Scoparium which is found almost exclusively in New Zealand.  However, the Australian Honey Bee Industry Council argues that Leptospermum tree originated in Tasmania and seed dispersed from there to New Zealand. This is supported by the fact that Australia is home to over 80 species of Leptospermum to New Zealand’s one.

The trade mark dispute comes after a surge in demand for the product globally, with the New Zealand market tripling in value since 2012. New Zealand manuka exports are currently valued at around 10 times that of Australia’s, sending more than 9000 tonnes out of the country per annum. New Zealand’s Unique Manuka Factor Honey Association stressed that the international trade mark application has been filed to protect the multi-million dollar industry from foreign imitators cashing in and damaging the brand.

What rights does trademark registration provide?

A trademark registration will confer an exclusive right for the use of the registered trademark. This implies that the trademark can be exclusively used by its owner, or licensed to another party for use in return for payment. Registration provides legal certainty and reinforces the position of the registerer, in case of litigation. A trademark is initially registered for a period of ten years in Australia, and continues indefinitely as long as the renewal fees are paid. For more information on trademarks, read our previous blog.

What is an international trademark?

Australian trade mark owners should consider registering an international trade mark in any countries or jurisdictions where their products or services are offered, or will be offered, in the future. Australian trademark owners can seek trademark protection overseas by filing an application directly to each country, or by filing a single application filed through the World Intellectual Property Organisation nominating the Madrid Protocol countries in which protection is sought. To see the countries which are members of the Madrid System, click here.

The Madrid System is governed by two separate international treaties: the Madrid Agreement and the Madrid Protocol. Under the Agreement, nationals of any signatory may secure protection of their trademark, registered in the country of origin, in all other countries that are parties to the Agreement. All requests for trademark protection in Madrid member countries are examined according to the trade mark laws existing in designated countries. To register an international trademark, IP Australia will accept the application through the Madrid eFile System found in Online Services (eServices).

Tips for trade marking

If you’re looking to register a trademark, here are a few quick tips:

  • Perform thorough trademark due diligence to ensure that someone else doesn’t already own a trademark that is “confusingly similar” to the trademark you want to use;
  • Choose a trademark that is not generic, as this won’t be protected;
  • Register your trademark as soon as possible with IP Australia to obtain the immediate Australia-wide exclusive right to use the trademark for the goods/and or services for which the trademark is registered;
  • Be aware of the 2-month period for opposition by third parties; and
  • If you’re unsure, seek advice from an experienced Intellectual Property lawyer to ensure that your trademark is properly protected.

Want to know more about trademarks? Looking for an experienced solicitor in Newcastle, Sydney or the Hunter to conduct an Intellectual Property Law audit for your business? Call us on (02) 4929 7002, email us or complete an enquiry form.

Image: ‘Manuka Honey’ by Ryan Merce available at Flickr under a Creative Commons Attribution 2.0.