Monopolising foods using trade marks

By Rob Vienet, Nick Li
Food & Beverage Intellectual Property Patents & Trade Marks

In brief 6 min read

Trade mark registration is intended to protect the brand of one trader's goods or services from that of another trader. Despite this, businesses in the food industry have increasingly sought trade mark registration for signs that inherently describe the food for which trade mark registration is sought.

Key takeaways

  • There is a recent trend for businesses in the food industry to seek trade mark registration for terms that inherently describe the food for which trade mark registration is sought.
  • Brands that comprise an inherently descriptive sign generally seek trade mark registration to monopolise the product. Because of this, trade mark applications of this kind are rarely successful and frequently challenged. Even if successful, it is difficult to prevent other traders from using that term altogether, even if such a right is acquired.
  • Traders in the food sector have invested significantly in failed attempts to obtain trade mark protection for these arguably descriptive terms, as successful registration is likely to result in a substantial competitive advantage.

Who in your organisation needs to know about this?

Legal counsel and those involved in product marketing.

Marking the boundaries of trade mark protection

The law is reluctant to protect descriptive trade marks

Trade mark protection is the most effective way to protect a brand, particularly in a competitive market.

At its core, a trade mark must be capable of acting as a badge of origin, to distinguish the goods or services of the trade mark owner from that of other traders.

A trade mark is less likely to meet that test if it inherently describes a characteristic of the goods or services for which trade mark registration is sought. Terms that other traders will legitimately want to use to describe their goods and services will not generally be afforded trade mark protection.

Despite the foregoing, in recent years certain traders have made notable attempts to obtain trade mark protection for descriptive marks. A highly publicised example is the a2 Milk Company's (a2MC) trilogy of unsuccessful trade mark proceedings for 'A2 protein'-related signs in relation to dairy products. Another example is the global dispute over certification trade marks for manuka honey.

A little too close to 'A2' for trade mark protection

a2MC recently filed three appeals in the Federal Court. These relate to trade mark decisions concerning 'A2 protein' dairy products.

'A2', in dairy, refers to products that contain a particular type of protein known as the A2-beta-casein protein and none of the A1-beta-casein protein. In contrast, most milk in Australian supermarkets contains a mix of both the A2 protein and the A1 protein.

a2MC sells 'A2' dairy products under 'A2'-related branding, and has applied to register 'a2 Milk' and 'TRUE A2' in relation to certain dairy products. a2MC has also sought to oppose a trade mark application a third party has made for 'OPEN COUNTRY A2' for certain dairy products. a2MC has been unsuccessful at each stage so far.

a2MC's trade mark applications failed because the signs could not distinguish a2MC's dairy from the A2 protein dairy of other traders. 'A2'-related expressions, of course, would ordinarily signify to consumers the presence of only A2-beta-casein protein. This highlights the difficulty of obtaining trade mark registration for terms that are, or have become, descriptive.

a2MC also unsuccessfully opposed an application by Open Country Dairy Limited to register 'OPEN COUNTRY A2' for various dairy products. a2MC argued that if the trade mark is registered, the consumers might confuse the dairy products Open Country and a2MC offer. The Hearing Officer disagreed, stating that the 'A2' part of the mark described an inherent trait of its products, and consumers would recognise that 'OPEN COUNTRY' and 'a2 Milk Company' have different origins.

Even if Open Country Dairy's trade mark is registered, it is unlikely to be able to enforce against other traders using 'A2' for dairy products. As the Hearing Officer explained:

There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public.

The decisions have each been appealed to the Federal Court.

A swarm of manuka honey disputes across the globe

Manuka honey is all the buzz right now, and Manuka Honey Appellation Society Incorporated's (NZ Manuka) bid to secure certification trade mark protection for 'Manuka Honey' has spawned trade mark oppositions around the world.

Manuka honey originates from bees that collect the nectar of a particular kind of shrub of the Leptospermum genus. Manuka honey derives its name from the Maori word for the only species (Leptospermum scoparium) of the Leptospermum plant that exists in New Zealand, 'Mānuka', pictured below. Interestingly, Leptospermum scoparium originated in Australia, but is now more common in New Zealand.

Leptospermum scoparium

NZ Manuka has sought to register 'MANUKA HONEY' as a certification mark in several jurisdictions. If it is successful, it means that only honey produced in New Zealand and derived from the Leptospermum scoparium plant can be marketed as 'manuka honey'. NZ Manuka is concerned that 'MANUKA HONEY' is being used for honey derived from other Leptospermum species or otherwise produced in countries outside New Zealand.

If successful, 'MANUKA' would be protected not dissimilarly to other geographical indications. New Zealand beekeepers would hold a premium marketing position because beekeepers outside New Zealand would not be able to use 'MANUKA' for honey, even if the honey is derived from the Leptospermum scoparium plant.

Not surprisingly, the Australian Manuka Honey Association (Australian Manuka) has opposed many of these applications, primarily on the basis that 'MANUKA HONEY' is not capable of distinguishing certified honey from uncertified honey. Its main contention is that the word 'MANUKA' is inherently descriptive of the plant from which the honey is made.

Proceedings are on foot in various jurisdictions, with, so far, differing and often conflicting preliminary views:

  • The New Zealand Intellectual Property Office accepted the trade mark application, deciding that 'MANUKA HONEY' was capable of differentiating Leptospermum scoparium honey produced in New Zealand (ie certified goods) from Leptospermum honey produced elsewhere (ie uncertified goods).
  • In contrast, the European Intellectual Property Office has rejected the trade mark application. It decided that consumers would understand the term to mean 'honey from the nectar of the manuka tree', so that there was no difference between the term submitted for registration and the one in common parlance. In reaching this decision, EUIPO was plainly persuaded by the public interest that signs describing the characteristics of goods or services for which registration is sought should be free to use by all.

We consider the European approach to be correct. However, opposition proceedings are not over in New Zealand or Europe.

The New Zealand Government has already provided millions to New Zealand Manuka in support of its campaign. New Zealand recognises that if 'Manuka' is registered as a certification trade mark, the Manuka honey industry in New Zealand will gain a significant competitive advantage, and an effective monopoly of Manuka honey to the exclusion of manuka honey producers from other countries. The question that remains unanswered for now is whether other countries, including in Europe, agree with NZ Manuka that the manuka honey is so characteristically of New Zealand that it is deserving of protection akin to that afforded to geographical indications.