Former chief executive of the UK Patent Office and free trade negotiator with the European Commission, Ian Fletcher – who also served as an advisor to Mānuka Honey Appellation Society and Te Pitau until early last year – gives his analysis on the recent United Kingdom Intellectual Property Office (UK IPO) manuka honey ruling and where to from here following the setback.
By Ian Fletcher
A lot of people are wondering what to make of the UK IPO’s decision to allow the appeals by the Australian manuka producers and Valeo-Rowse (the largest player in the UK domestic honey market). The decision kills efforts by New Zealand based producers to get a certification trademark for manuka honey in the UK, unless there is a successful appeal.
What should we think, and what should we do?
The decision runs to 50 pages. It’s carefully considered and needs to be taken seriously. It is made under UK law and so reflects UK law and trademark practice. New Zealand law is not relevant.
The New Zealand case, made through the Manuka Honey Appellation Society, failed to show that the term ‘manuka honey’ had acquired what’s known as ‘distinctiveness’, which would have meant the Tribunal considered that consumers would generally associate the term with manuka honey only from New Zealand.
Without distinctiveness, the decision means that ‘manuka honey’ can be used to describe honey made mainly from manuka nectar from anywhere. This will help Australian producers immediately, but also others in other countries later, as manuka is being planted in several parts of the world (for example, Serbia has produced an excellent ‘how to’ guide for would-be manuka growers).
The New Zealand case wasn’t helped by the MPI definition, nor by some exporters using ‘manuka’ in corporate trademarks used to sell non-manuka honey. But the big loss was on distinctiveness.
Overall, this is not a surprise: trademark law and rules set the bar high, so descriptive terms aren’t locked up and so are generally available to all producers. We should have been prepared.
The Tribunal also made a finding of bad faith against the New Zealand side.
What next? An appeal may be considered. Whatever the merits of an appeal, it’s time to get serious. The whole industry should come together, and
· Go back to Government on Geographic Indications (GIs). The Government’s refusal to engage on GIs is a blunder, made worse by the Australian submarine case, which will delay and toughen EU free trade agreements; and
· Talk to the Australians. Do a deal. We will lose something, but right now we stand to lose the lot, ten-plus years work and value. The perfect solution: a joint GI with Australia (or some states). It would give a lot more negotiating weight.