Honey trademarks found to have become customary

New Zealand

New Zealand honey is particularly popular on the international market, and is often sold at premium prices.  One of the reasons for this is that, in the mid-1990s, honey from the manuka (a native New Zealand plant) flower was discovered to have special antibacterial properties that were more stable than the anti-bacterial properties of other honeys. These antibacterial properties were found to be present even after all hydrogen peroxide had been removed. These properties became known as 'non-peroxide activity' or 'NPA'. 

Some non-NPA honey is sold by reference to terms such as 'active' (plus a number rating indicating its total activity level) or 'total activity' (plus a number rating). The expert evidence presented by the opponent in the present case showed that the instability of peroxide activity in honey means that there is no way of knowing what the level of activity will be when non-NPA honey is sold and used.

The opponent in Lee v UMF Honey Association Inc ([2013] NZIPOTM 34) had a particularly strong interest in honey. UMF Honey Association Inc is an incorporated society focusing on the promotion of NPA as a measure of the special antibacterial qualities in manuka honey. The opponent owns trademark registrations for UNIQUE MANUKA FACTOR and UMF, and has developed a “proprietary NPA rating system”, which it licences to third parties. The opponent uses a rating system of '+' and '25+' to describe the level of NPA in the honey. There are other rating systems used in the market.

The applicant, Henry Soo Lee, is a director and shareholder involved in the production and distribution of honey and honey products.

The opponent succeeded in opposing six New Zealand trademark applications that included the terms 'non peroxide activity' and 'total activity percent', terms commonly used in relation to honey.

The trademark applications were for the following trademarks, the variations between the marks being in the level of NPA or total activity percent (or 'TAP').

 

The UMF Honey Association opposed on two main grounds:

  • The use of the terms 'NPA' and 'TPA' on honey that did not carry sufficient non-peroxide or total activity content would be confusing or deceptive; and 
  • The trademarks lacked distinctive character.

In terms of the first set of grounds, the assistant commissioner of trademarks accepted that consumers will understand the terms 'non-peroxide activity' and 'NPA' as indicating certain non-peroxide activity contents.  However, she did not find a likelihood of confusion or deception because it is presumed that the mark will be used in an appropriate fashion, namely on honey that does have carry sufficient non-peroxide content.

In respect of 'total activity percent' and 'TAP', the assistant commissioner found that consumers would understand the terms 'total activity percent' and 'TAP' as referring to the honey as having some sort of “activity” in relation to its antibacterial properties. However, because it is not possible to prove exactly what the level of activity is in non-NPA honey because of its instability, the assistant commissioner found that there would be a likelihood of confusion or deception if the terms 'total activity percent' and 'TAP' were used on honey products.

The assistant commissioner also found that none of the trademarks were sufficiently distinctive to qualify for registration. There was evidence that other traders were using terms such as 'NPA', 'non-peroxide activity', 'TAP' and 'total activity', and a numerical rating, along with circular devices. As such, she ruled that:

  • other traders were likely to want to use the same or a similar mark in connection with their own honey products;
  • the trademarks consisted only of signs or indications that may serve, in trade, to designate the kind, quality and other characteristics of the goods; and
  • the trademarks consisted only of signs or indications that have become customary in the current language or in the good-faith and established practices of trade. 

The stylisation of the trademarks did not save them given that it was said to consist only of “minor embellishments”.

All applications were refused and a costs award made against Lee. 

Kate Duckworth, Catalyst Intellectual Property, New Zealand

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