The recent end to the Manuka Honey trade mark dispute has demonstrated the importance of distinctiveness when seeking to register certification trade marks in Australia and overseas.

When buying a product or service, consumers are often concerned about whether that product or service meets a particular standard, or holds a certain characteristic. A certification trade mark is a unique type of trade mark which provides that guidance.

A certification mark might indicate that goods are sourced or made exclusively from a particular geographic location. One of the most recognisable marks of that kind is the “Australian made” mark. If this logo is contained on a product, it guarantees, among other things, that it was almost wholly made or grown in Australia.

Unlike ordinary trade marks, certification marks are not used exclusively by their owner, and are available for use by anyone whose goods or services meet the requirements contained in the rules which govern the certification.

The “MANUKA HONEY” certification mark dispute

Australian manuka honey producers have recently seen an end to legal proceedings in which New Zealand honey producers sought to obtain a certified trade mark in the United Kingdom and the European Union over the words “manuka honey”.

The move to discontinue the proceedings by New Zealand honey producers means that the respective rulings of the UK Intellectual Property Office (UKIPO) and European Intellectual Property Office (EUIPO), which dismissed the certification mark applications, will stand, and confirms that Australian producers can sell their products in the UK and European markets under the globally recognised name of manuka honey.

The proceedings formed part of a lengthy, multi-jurisdictional dispute which began when a certification trade mark application was filed with the Intellectual Property Office of New Zealand in 2015.

The basis for the trade mark application centred around the fact that the word “mānuka” is a Māori word. Although the plant which produces manuka honey is native to both Australia and New Zealand, and the term “manuka” has been used by sellers for an extended period of time, the New Zealand producers argued that the manuka certification mark should be confined only to honey produced in New Zealand.

Despite several applications and appeals, the attempts to obtain certification marks in Australia, Europe, China, and the United States have failed. These failures stem from a lack of inherent or acquired distinctiveness in the words “manuka honey”.

Another trade mark application forming part of the long-standing dispute was the above trade mark sought by Australian honey producers in Australia. Although the mark was accepted for registration, the application has since been withdrawn.

A merely descriptive expression lacking “certification-ness”

To be distinctive, a certification mark must be capable of distinguishing goods or services that are certified from other goods or services which are not so certified.[1] Marks which are purely descriptive will generally lack an inherent adaption to distinguish,[2] unless they have acquired factual distinctiveness through use.

In the UK proceedings, it was held that the mark was devoid of distinctive character. Whilst accepting that the word “manuka” has a Māori origin, the UKIPO held that it has entered the English language as a descriptive word, and is inherently incapable of distinguishing goods which are certified from those which are not. This was explained as follows:

Whilst the vast majority of Manuka honey sold in the UK appears to be from New Zealand and this is indicated on the packaging (but mostly not in a prominent way), there is nothing in the evidence to indicate that relevant public will understand that it exclusively originates from New Zealand. On the contrary, there is evidence from dictionaries, the [UK Food Standards Agency] project and from press articles that all suggest that the public understanding of the term in the UK is that it describes honey from New Zealand and other geographical locations, in particular, Australia.

The UKIPO stated that “a certification mark must convey … ‘certification-ness’ to the consumer … either inherently or because the consumer has been educated to recognise that the sign indicates that the goods are certified”.

The application to register the certification mark was rejected by the EUIPO on similar grounds:

Given that the mark has a clear descriptive meaning in relation to the goods for which certification is sought, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any other function, including certification of goods. The Office cannot grant an exclusive right to use a commonly used expression (as indicated in the dictionary entries) without any alteration, to one market operator.

Takeaways

If you are seeking to register a certification trade mark, it is a key requirement that the mark is distinctive.

Marks which are purely descriptive will generally lack an inherent adaption to distinguish, unless they have acquired factual distinctiveness through use. If a proposed mark merely describes a certain type of good or service, and that description is unlikely to lead a person to distinguish the certified good from one which is not certified, it is unlikely to be registrable as a certification mark.

If you are seeking to register a certification trade mark, it is important that the mark is able to identify what is being certified, whilst also being distinctive enough that it is able to differentiate between the certified goods and those which are not certified.

For more information on registering certified trade marks in Australia or overseas, please contact a member of Thomson Geer’s Intellectual Property Team.

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