First published in the INTA BULLETIN, June 15, 2016 Vol. 71 No. 10. To see the original article please click here

On April 20, 2016, the Court of Appeal of New Zealand overturned a High Court decision which held that MANUKA DOCTOR was an unlawful health claim. (CA680/2015 [2016] NZCA 141). The court disagreed with the High Court’s assessment of how consumers would interpret the word “doctor” in a trademark. The decision avoids potentially significant changes to the assessment of descriptiveness and therefore registrability of DOCTOR-type marks in New Zealand.

Why Is Manuka Honey in Court?

Manuka honey is a type of honey produced in Australia and New Zealand widely regarded as having therapeutic benefits.

Honey New Zealand (International) Ltd produces manuka honey under the MANUKA DOCTOR and MANUKA PHARM brands. The New Zealand Ministry for Primary Industries (MPI) determined that these marks contravened the Australian and New Zealand Food Standards Code 2012, as the marks suggested health benefits by using the words “DOCTOR” and “PHARM.” This assessment resulted in MPI denying Honey New Zealand an export certificate for the honey.

Honey New Zealand took the case to the High Court, which agreed with MPI’s assessment that MANUKA PHARM and MANUKA DOCTOR constituted health claims contrary to the Code. Honey New Zealand appealed to the Court of Appeal, but only in relation to MANUKA DOCTOR.

The Court of Appeal held that MANUKA DOCTOR was not a health claim (as defined in the Code), as:

  • The Code is aimed at claims of specific, measurable health effects, given the definition of the term “health effect” in the Code;
  • Food Standards Australia and New Zealand itself had noted that broad health claims are not captured by the Code;
  • The High Court’s perceived “gap in the consumer protection purpose of the Code” was filled by consumer protection provided by other legislation; and
  • The Code’s statutory purposes include the desirability to avoid unnecessary restrictions on trade.

A Dose of Common Sense

The court approved Honey New Zealand counsel’s reference to marks such as DR PEPPER (soft drinks) and DOCTOR KRACKER (crackers, crisps), along with RUG DOCTOR, to support a view that it is unlikely that most consumers who exercise reasonable care would make an association between the word “doctor” and health, healing, and medicine - in sharp contrast to the High Court.

The court found that MANUKA DOCTOR was not a therapeutic claim. There was no express or implied reference to any disease, disorder, or condition which would be treated by the MANUKA DOCTOR brand.

If the Court of Appeal had agreed with the High Court’s decision, then this may have impacted significantly upon the assessment of descriptiveness issues and therefore the registrability of DOCTOR marks, and other similar types of marks, in New Zealand. In setting aside the lower court’s decision, the Court of Appeal has administered a dose of common sense and practicality.