The High Court of New Zealand has held that the trade marks MANUKA DOCTOR and MANUKA HONEY each amount to a "health claim" which contravenes the Australian and New Zealand Food Standards Code 2012. The decision effectively stops Honey New Zealand (International) Pty Ltd (Honey NZ) from exporting its honey branded under those marks to some countries. However the decision may also impact upon the registrability of trade marks for health foods and other health products, particularly if the trade marks contain allusory words such as "doctor" or "pharm".
Official assessment - are MANUKA DOCTOR and MANUKA PHARM "health claims"?
- "Manuka honey" is a type of honey produced by bees that pollinate the Manuka bush, in Australia and New Zealand. It is widely regarded as an alternative medicine with a range of therapeutic benefits. Honey NZ produces and exports a range of honey products, including Manuka honey.
- The New Zealand Ministry for Primary Industries (MPI) assess and issues what are commonly known as "export certificates" in relation to New Zealand products destined for overseas markets, without which many countries will refuse importation of those goods.
- MPI formed the view that the MANUKA DOCTOR and MANUKA PHARM labelling on Honey NZ's products contravened the Australian and New Zealand Food Standards Code 2012, as they effectively claimed health effects and therapeutic benefits, through use of the words "doctor" and "pharm".
- Honey NZ appealed this decision to the High Court which needed to consider whether MANUKA PHARM and MANUKA DOCTOR constitute "health claims" contrary to the Food Standards Code 2012.
The High Court Agrees – each brand is a prohibited health claim
The Court firstly formed the view that a "generalised wellness claim" is nevertheless a health claim contrary to the Food Standards Code 2012 which prohibits the making of therapeutic claims (Cl. 7B).
The Court determined that the words DOCTOR and PHARM suggest that those branded products are "good for you" due to their association with health and medicine, and the lack of any other connection between those concepts and the products in question (honey). As such the Court concluded that "if these trade marks are seen by the consumer to contain any message, then in my view it is a health message that will be inferred by the consumer", and thus declined Honey NZ's appeal.
Is the Court's view consistent with established trade mark practice in New Zealand?
The Court's view may alarm manufacturers of health food products and may be inconsistent with trade mark registrability in New Zealand. Many trade mark specialists may be more likely to support the contrary view put forward by Honey NZ's counsel – namely, that each trade mark would be viewed by consumers simply as a trade mark to distinguish the goods in the marketplace. Indeed, the inclusion of "doctor" in a trade mark is so common that the Australian Trade Marks Office discusses such trade marks expressly in its practice manual, concluding that they are generally acceptable for registration unless "doctor" is combined with another specific word do create a descriptive trade mark (e.g: EYE DOCTOR for medical services).
Will this decision prevent registration of "DOCTOR" trade marks in New Zealand?
The Intellectual Property Office of New Zealand (IPONZ) must not register a trade mark if its use "would be likely to deceive or cause confusion" or "is contrary to New Zealand law" (Section 17, Trade Marks Act 2002). As such, there is at least some risk that IPONZ may feel compelled to reassess the registrability of DOCTOR trade marks, and other similar types of marks, particularly in relation to health foods. However it seems more likely that this decision will be seen as relating specifically to its facts.
The Court's conclusion seems to under-estimate the ability of New Zealand consumers to avoid being misled by the use of terms such as DOCTOR and PHARM in a trade mark, noting that most consumers would recognise those as simple commercial puffery, rather than asserting any particular health benefit.