Opposition by Manuka Honey Appellation Society Incorporated to registration of trade mark application number 1869737 (class 30) – AUSTRALIAN MANUKA with flower device - in the name of Lawrence Michael Howes

[2021] ATMO 64

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Manuka Honey Appellation Society Incorporated to registration of trade mark application number 1869737 (class 30) – AUSTRALIAN MANUKA with flower device - in the name of Lawrence Michael Howes

Delegate:	Adrian Richards
Representation:	Opponent: Marcus Fleming of Counsel instructed by Corrs Chambers Westgarth Applicant: Lucy McGovern of Counsel instructed by Hazan Hollander
Decision:	2021 ATMO 64 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 42(b), 43 and 60 considered – whether manuka refers to honey from New Zealand only – whether use of manuka in New Zealand is use as a trade mark – no grounds established – trade mark to proceed to registration

Background

1. This opposition to registration of a trade mark, brought by the Manuka Honey Appellation Society Incorporated (‘Opponent’), posits that the term manuka when used in relation to honey connotes certain produce only from New Zealand. The position of the applicant for registration, Lawrence Michael Howes (‘Applicant’), centres on the notion that manuka is a common name for Leptospermum scoparium (‘L. scoparium’), a tea tree species native to Australia and New Zealand. Thus, the Applicant argues this term is merely descriptive of both the flowering plant from which honey is gathered and the honey itself.

2. The first step toward this opposition happened on 30 August 2017 (‘Relevant Date’), when the Applicant filed an application to register the following trade mark with this office, seeking registration in class 30 for honey:

   (‘Trade Mark’)

3. The Trade Mark was examined and accepted for possible registration. The Opponent filed notice of intention to oppose registration of the Trade Mark on 23 March 2018, and a statement of grounds and particulars a month later. The Applicant filed notice of intention to defend the opposition on 22 May 2018. The parties then filed their evidence, which I have detailed under the relevant heading below.

4. I was allocated, as a delegate of the Registrar or Trade Marks, to hear the opposition. The hearing took place on 18 May 2020. Lucy McGovern of Counsel instructed by Hazan Hollander appeared for the Applicant. Marcus Fleming of Counsel and Stephen Stern of Corrs Chambers Westgarth provided submissions on the Opponent’s behalf.

   Evidence

5. The following declarations were filed as evidence:

   Evidence in support

   Johnathan McDonald Counsell Stephens, Head of Honey Research at Comvita New Zealand Ltd and advisor for the Unique Manuka Factor Honey Association Incorporated, made 28 August 2018 with annexures

   John Rawcliffe, Secretary of the Opponent and Administrator of the Unique Manuka Factor Honey Association Incorporated, made 28 August 2018 with annexures

   Evidence in answer

   Lawrence Michael Howes, the Applicant and managing director of Active Medicinal Honey Pty Ltd, made 18 December 2018 with exhibits

   Evidence in reply

   Johnathan McDonald Counsell Stephens, made 16 September 2019 with annexures

   John Rawcliffe, made 16 September 2019 with annexures

6. Annexed to Mr Howes’ declaration are two documents executed by other persons and apparently prepared for these proceedings. The first is from Associate Professor Greg Jordon, Head of Discipline (Biological Sciences) at the University of Tasmania. This takes the form of a letter, largely listing a series of Australian publications that provide examples where the common name manuka is afforded to L. scoparium. The letter ends with the following statement:

   I cannot provide other cultural evidence, except to make a statement (that I am willing to consider legally binding) that I was taught by Professor Bill Jackson (Head of the Department of Plant Sciences, University of Tasmania) as early as 1984 that manuka was the common name for Leptospermum scoparium in Tasmania.

7. Given the ‘legally binding’ undertaking in the excerpt above, I find this aspect of the letter at least is in the form of a declaration and ought to be afforded its due weight.

8. The second document annexed to Mr Howes’ declaration is by Dr Peter Brooks, Senior Lecturer in Chemistry at the University of the Sunshine Coast. The entirety of this document is sworn, and as such I take it to stand as its own declaration.

9. The evidence filed by the parties includes scientific and industry books and periodicals, generalist newspapers, dictionaries and place name indexes. Much of this information goes to the repute earned by the sweet product of European honey bees who have gathered nectar from L. scoparium. All honey has antibacterial properties, owing to certain inherent qualities of the substance—a presence of small amounts of hydrogen peroxide along with very little water. The evidence includes scientific papers which indicate that L. scoparium derived honey has other properties variously described as ‘non-peroxide antibacterial properties’ or the ‘unique manuka factor’.

   Grounds of opposition

   Section 43[1]

   [1] Unless otherwise specified a reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth).

10. I address this ground of opposition first for two reasons: it encapsulates nearly the whole of the dispute between the parties, and it is in my estimate the strongest of the three grounds argued by the Opponent. The legislation expresses the ground as follows:

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

11. The Opponent’s position for all three of the nominated grounds rests on the notion that the word manuka contained in the Trade Mark connotes a specific floral honey exclusively from New Zealand. To recast that in terms of this ground of opposition, pairing the word ‘manuka’ with ‘Australian’ is inherently contradictory. Such an internal contradiction would of course lead to confusion in the minds of the public. I depart from the Opponent at the earlier point—evidence indicates that manuka has been used to describe honey produced in Australia, from the same plant source as in New Zealand, since at least the late 19^th century through to the Relevant Date. It is helpful to cover the naming of L. scoparium before moving on to the honey produced therefrom.

    Common names of the plant

12. Long before the European honey bee or Latinate taxonomies of plants arrived in Oceania, the Māori people discovered and settled on the islands they now call Aotearoa. In their lands they found a plant with various medicinal properties and named it mānuka.[2]

    [2] J T Salmon, Native Trees of New Zealand (A H & A W Reed Ltd, 1980) 162.

13. Several hundred years later, while exploring the coastlines of what would be named Australia and New Zealand, Captain James Cook’s men used the same medicinal plant to make a herbal tea. It alleviated symptoms of scurvy. He called it ‘the tea plant’[3] which apparently led to its earliest common name in English, ‘tea tree’.[4]

    [3] James Cook, A voyage towards the South Pole and round the world: performed in His Majesty's ships the Resolution and Adventure, in the years 1772, 1773, 1774 and 1775 (W Strahan and T Cadell, 1777) 99.

    [4] J T Salmon, Native Trees of New Zealand (A H & A W Reed Ltd, Auckland, 1980) 162.

14. There is a tendency for the English language to pick up more than one word for things and to take loanwords from other languages. Thus by the mid-19th century, during the early stages of European settlement of the islands that now make up New Zealand, the word ‘manuka’[5] for this plant was also well established among local Anglophones. There was from the outset of colonisation significant mixing of the populations of the colonies in this region and along with that a mixing of words for things. This plant being native to both south eastern Australia and New Zealand, its associated Māori-derived loanword travelled over the Tasman Sea quite early on. This is directly evidenced in several contemporaneous news articles and scientific descriptions, and indirectly by the many placenames in Australia that include the word manuka in them (many having been so named due to the plant being locally dominant).

    [5] That is, the same Māori word but without a macron over the first ‘a’. The presence of a macron lengthens the vowel sound.

15. The taxonomy of the Leptospermum genus has changed over time. New Zealand is home to one species and Australia over 80, with the one overlap being L. scoparium. Species of this genus are difficult to tell apart, with a major step toward settling their proper identification and delineations occurring as recently as 1989.[6] As such it is likely that the name manuka has at times been applied incorrectly to other species in Australia.

    [6] Joy Thompson, ‘A Revision of the Genus Leptospermum (Myrtaceae)’ (1989) 3(3) Telopea 22.

16. My reading of the evidence in relation to the common name of L. scoparium is that at the Relevant Date ‘tea tree’ was predominant in Australian English in all places except Tasmania, where ‘manuka’ is preferred, as it is in New Zealand English. Aside from these two names, there are some other common names ascribed to this plant. I have already mentioned Cook’s ‘tea plant’ though this appears to have had a short life. There is also a relatively rare spelling variant ‘ti tree’ in the literature and mentions of ‘common tea tree’, ‘broom tea tree’ and a few others. Despite there being a predominant common name in each country, their citizenry continues to use both ‘manuka’ and ‘tea tree’ for the plant to some extent. For example, usage of the common name manuka looks to have been prevalent in Tasmania from the 1880s all the way through to the Relevant Date. Even outside of Tasmania this name is useful when some precision is required without resorting to Latin—the prevalent common name for the entire Leptospermum genus is ‘tea trees.’ An example of such usage is in the Opponent’s evidence in a printout from the website of the Australian National Botanic Gardens:

    Leptospermum scoparium (Manuka or Tea tree or just Leptospermum) is a shrub or small tree native to New Zealand and southeast Australia

    Naming the honey

17. The name of honey from L. scoparium has a shorter, and in my view, more colourful history than the etymology of the plant, in no small part due to strident detractors of this produce in the late 19^th and early to mid 20^th centuries.

18. The Opponent’s evidence establishes quite conclusively that ‘manuka honey’ was widely recognised as the name for a particular crop in New Zealand as early as the 1880s. The Applicant in turn has offered proof that the same usage had appeared on the public record in South Australia by the 1930s (discussed below). The Opponent’s evidence posits that ‘[h]istorically, it is likely that apiarists in Australia were learning and adopting techniques to manage this honey from New Zealand counterparts, accompanied with some sharing of terms.’ This seems both reasonable and is reflected in the literature produced in the evidence.

19. Australian apiarists appear to have held ambivalence toward this flowering plant in the early days. On the pro side of the ledger, this plant was known to offer surplus nectar, thus offering reliably good yields. On the cons the distinctive smell and taste of this honey was apparently far from attractive to many consumers of the late 19^th and early 20^th centuries. For example, one source from the 1930s in referring to ‘high-grade’ honey from bluegum blossoms, noted that some hives had been ‘tainted in flavour with the rank honey from manuka or tea-tree blossoms’.[7] Another apparent downside came from its thixotropy, making processing this type of honey difficult on machinery designed for other honeys with relatively consistent viscosity. That this honey may not have been particularly sought after at the time is not important. Indeed, the situation had significantly reversed by the 1950s with certain markets preferring darker, stronger tasting honey, and by the Relevant Date this type of honey was selling at a significant premium due to its claimed medicinal qualities. The point I draw from these earlier news stories is that the plant was a known entity from very early on in the establishment of the Australian honey industry.

    [7] H A Lindsay, ‘Disappointing Honey Season—Poor Returns In South-East’, Chronicle (Adelaide, 11 February 1937) 12. Mr Lindsay was clearly not impressed with this type of honey, earlier stating for the same newspaper that that its flavour ‘can only be described as repulsive’ before giving tips on how to clear hives of it: H A Lindsay ‘Dealing with Manuka Honey’, Chronicle (Adelaide, 28 November 1935) 4.

20. While I have found above that L. scoparium is more commonly called ‘tea tree’ in Australia, this is not the case for its honey. I have been unable to find in the evidence any examples of this honey, when produced in Australia, being referred to as anything other than ‘manuka honey’. This is perhaps, once again, due to the imprecision that ‘tea tree’ offers apiarists since no other specific name is in sufficiently common usage. The Opponent’s representatives seek to argue on occasion that it may have been referred to as ‘jellybush honey’, but the evidence establishes that this term relates to honey derived from another species, Leptospermum polygalifolium (‘L. polygalifolium’). This has occasionally been referred to as an alternative to manuka honey because it possesses similar non-peroxide antibacterial properties.

21. The parties are agreed, and their evidence supports the view, that all manuka honey comes from L. scoparium. It would therefore be misleading to call honey derived from, for example, L. polygalifolium as manuka or even as Australian manuka. There is no suggestion that the Applicant would do this. Rather, he declares that he is growing L. scoparium in New South Wales using seeds from Tasmania

22. There have been recent examples of recognition in New Zealand that L. scoparium derived honey from Australia is manuka. Dr Brooks was invited to the 2016 New Zealand Apiculture Conference to provide a keynote speech titled ‘Manuka—The Australian Story’. In his words:

    This presentation focussed on collaborations between Australian and New Zealand Honey industries, and developments in Australia. At no point was a conflict raised by the New Zealand audience.

    It follows that the Manuka Honey Appellation Society claim the [sic] Manuka Honey is only a New Zealand product is factually incorrect, as shown by the New Zealand Apiculture recognition of “Australian Manuka” and New Zealand Ministry of Primary Industries’ own reference to “Australian Manuka” in their definition of Manuka honey.

23. While this is not central to the question of usage in Australia, it supports the notions outlined above that Australian and New Zealand usage aligned in relation to this product from early on. That usage being concerned with the floral, as opposed to geographical, source. This alignment was more likely than not in place at the Relevant Date.

    Geographical indication

24. Prior to the 1990s ‘champagne’ was in common usage in Australia as a descriptor for most dry sparkling white wines, no matter their provenance. Yet at the time this local naming convention stood in contrast to English law, which had some time prior found that wine by that name only comes from the Champagne region in France.[8] Specifically in that case, it was misleading to offer for sale a similar wine sourced from Spain and call it Spanish champagne. The situation today is markedly different, with champagne being listed on the Register of Protected Geographical Indications and Other Terms pursuant to the Wine Australia Act 2013 (Cth) and what was once called Spanish champagne has carved out its own niche under the name cava. In between then and now, this and other wine terms were subject to a largely successful policy of ‘claw-back’. I mention this now to ask whether, despite my discussion and conclusions on historical usage of the word manuka above, it might be that only true manuka honey comes from New Zealand such that this term too ought to be clawed back?

    [8] Bollinger v Costa Brava Wine Co Ltd (No 2) [1961] RPC 116 (Danckwerts J) (‘Bollinger’).

25. A geographical indication is defined as:

    in relation to goods, means a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.[9]

    [9] Trade Marks Act 1995 (Cth) s 6 (definition of ‘geographical indication’).

26. The Opponent has led evidence of chemical assays and the like that it says shows honey derived from L. scoparium have different compounds in different ratios depending on whether they are produced in Australia or New Zealand. The Applicant asked me to look closely at those assays and compare the differences within New Zealand and take note of the variances within them. The variances from within New Zealand are themselves, to my admittedly untrained eye, apparently as great as any comparison between Australian and New Zealand sourced samples. I take some comfort that my layman’s reading of these assays is in line with findings of Dr Brooks, who declares that ‘…Kanuka Honey[10] can be distinguished from New Zealand Manuka, while Manuka from Australia cannot.’

    [10] This is a reference to honey derived from the New Zealand native Kunzea ericoides. Prior to 1983 this plant was classified as a species of Leptospermum. Its Māori name is kānuka, with other common names being kanuka, white tea-tree or burgan.

27. I am satisfied that the word manuka, when used in relation to honey, connotes that L. scoparium is its floral source. This specific connotation does not appear restricted to where these flowers grew. It follows that I am not satisfied that the geographical term ‘Australian’ paired with this word is likely to deceive or cause confusion. The Opponent has not established this ground of opposition.

    Section 42(b)

28. This ground of opposition prohibits registration of trade marks whose use would be contrary to law. The Opponent’s case here again takes the shape of a proto-geographical indicator claim, using the framework of the action in tort of passing off (or its more recent statutory counterpart, s 18 of the Australian Consumer Law) along the lines of the approach taken in Bollinger. The problem with this, as I have outlined above, is the very different historical setting to that of champagne. What is more, so far as chemistry is relied upon to back up some assertion of conditions unique to New Zealand, there is little to go on. This ground of opposition is not established.

    Section 60

29. This ground of opposition seeks to prevent registration of trade marks whose use would deceive or cause confusion because there existed, at the Relevant Date, a reputation in another trade mark. The first element of this ground of opposition, s 60(a), requires the Opponent nominate some earlier trade mark which has acquired a reputation. The Opponent suggests that manuka is that earlier trade mark.

30. For a word to perform as a trade mark, it must distinguish the goods of one trader from another. The Opponent’s position on this is not terribly clear. It appears to assert that the word manuka distinguishes honey from L. scoparium sourced by New Zealand apiarists from their Australian counterparts. No explanation is offered as to how, even if this were taken as a given, such use by New Zealand producers would be other than purely descriptive of those goods. By the Relevant Date, honey in general was often referred to by its nectar source. There does not appear to be a suggestion that traders in New Zealand use the term manuka to distinguish their honey from other traders. Instead they use trade marks to distinguish between themselves. Beyond that, ‘New Zealand’ is typically used to identify the geographical origin of their products. Indeed each example of usage of ‘manuka honey’ in evidence is plainly to distinguish that varietal from other (less valuable) floral sources.

1. I have seen no examples at all of use of the term manuka as a trade mark. Without a trade mark there can be no basis on which to find for the Opponent under s 60(a). It follows that this ground of opposition cannot be established.

   Decision and costs

2. Since no ground of opposition is established to any extent, my decision is to register the Trade Mark. As such, the Trade Mark shall proceed to registration one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of this opposition should be in accordance with the Court’s order or direction.

3. Both parties sought an award of costs. It is usual for costs to follow the event, and I am not aware of a reason to divert from that approach. I award costs against the Opponent.

   Adrian Richards
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   7 July 2021