An essential oils start-up company has won a trademark dispute against a skincare company endorsed by one of the Kardashian sisters.
Manuka Medic was started by West-Coaster Rory Hill in 2018 after he noticed his sensitive skin cleared up whenever he was on properties surrounded by native mānuka.
He set about extracting the oil from the native plant and selling it online and at markets before applying to have the product trademarked with the Intellectual Property Office (IPO) under the name “Manuka Medic”.
However, another New Zealand company, Manuka Doctor, has been selling cosmetic products containing extracts from the mānuka plant for nearly a decade and in 2016 it announced Kourtney Kardashian as one of its brand ambassadors.
In an advert by Manuka Doctor, the eldest Kardashian sister said she’d been using their products for years before the company reached out asking if she wanted to represent the brand.
Kardashian, who recently married Travis Barker and is pregnant with their first child, continues to back the products.
Manuka Doctor opposed Hill’s application to register the name Manuka Medic on the grounds that consumers would be likely to confuse the two products because of the linguistic similarities.
But the IPO this week dismissed Manuka Doctor’s opposition.
The company told NZME it was disappointed with the decision and was reviewing its options. It has until next week to lodge an appeal.
For Hill, it was a big win.
“It seemed a bit like the little guy versus the big corporation,” he told NZME.
Hill, a drainlayer by trade, sells the product under the name Mānuka Oil from his company’s website, Blackfern Botanicals. But if he’s successful with his trademark application he’ll change the name to Manuka Medic.
He said the process of applying for a trademark was intimidating because of the sheer amount of paperwork that needed to be filed and was filed against them by Manuka Doctor in opposition.
“There was a bit of deliberation about whether we should even go through with the application.”
As for the product idea, Hill said he moved from Queenstown to the West Coast and witnessed cold sores on his lips clear up when he was around the native plant.
“I thought there’s got to be a way to use this,” he said.
“From there I got to think ‘what if I could distill that down into an oil’.”
So Hill and his father purchased an old dairy vat and turned it into a still which holds about 1200 litres. It takes him roughly six hours to harvest enough mānuka to produce 300 to 500 millilitres of oil.
However, he’s keen to expand the operation and potentially build a transportable still to take to where the mānuka is rather than chopping it down and taking it to the still.
According to the IPO decision, Hill applied for the trademark in 2020. After Manuka Doctor signalled its opposition, a hearing was held on the matter in July this year.
At that hearing, Manuka Doctor argued it sold similar goods to Hill’s as its wide range of skincare products also contains mānuka plant extract.
The company was incorporated in 2011 and has since rapidly expanded in New Zealand where its products are sold in major supermarkets, pharmacies, cosmetic stores and online.
Manuka Doctor’s lawyer, Jack Oliver-Hood, told the IPO the names Manuka Doctor and Manuka Medic were too similar and consumers would likely confuse them.
He said registering the new trademark would prejudice the interests of the already well-established company he represented.
In response, Hill referenced a range of other registered trademarks in New Zealand that used the word “Manuka” followed by Restore, Clinic, Health and Healer.
Assistant commissioner of trademarks, Nigel Robb, said in his ruling he did not believe consumers would confuse the two names.
“I do not think doctor and medic are commonly used interchangeably.
“A person might refer to taking a child to the doctor for an earache but is unlikely to say they were taking the child to the medic.”
Robb said the two names conveyed a generally similar, but not identical, idea and that neither was especially distinctive.
“Balancing the similarity of and strongly allusive nature of the marks, the nature of the goods and the surrounding circumstance I conclude the probability of deception or confusion is not reasonably likely.”
Robb accepted that Manuka Doctor had established a reputation for itself but had not gone so far as to establish that they were “well known”.
Editorial note: Correct spelling of mānuka includes a macron above the ‘a’, however neither of the two companies in this story uses it in their trademarks. When referencing a trademark or brand in relation to these companies NZME has omitted a macron, however, when reference is made to the mānuka plant itself we have used one.