Rooibos: a teacup full of storm

For decades, rooibos (Aspalathus linearis) has been enjoyed by South Africans in the form of a refreshing tea brewed from the dried leaves of the plant. The tea is known to be high in antioxidants, has no caffeine and has been found to have therapeutic applications in the relief of allergies, digestive disorders and tension. As a result, more recently it has become popular among health-conscious consumers both in South Africa and abroad.

Around 10 years ago, the first attempt was made by foreign companies in the United States to appropriate the trademark ROOIBOS. This attempt was unsuccessful, but earlier in 2013 another attempt was made, this time by French company Compagnie de Trucy. The attempt at appropriation was justified by the French company in terms of the fact that at the time, the term was not protected in South Africa. This was indeed the case until recently, when the South African Department of Trade and Industry made use of the Merchandise Marks Act, which provides for the protection of the term "rooibos" as a geographical indication. Although there is no place or region called “rooibos”, the plant is found only in a particular region of the Western Cape province of South Africa. Therefore, there is geographical significance to the word.

Under the Merchandise Marks Act a mark need not be distinctive, which is a requirement of the Trademarks Act. This could have been problematic, given the fact that “rooibos” is clearly part of the English language and is defined in the Concise Oxford Dictionary, and hence has most likely acquired a generic use. All that is required in terms of the Merchandise Marks Act is that the minister of the Department of Trade and Industry publish a notice in the South African Government Gazette prohibiting the use of the mark ROOIBOS in relation to beverages unless they are produced in South Africa. On 12th July 2013 the Department of Trade and Industry published such notice in the Government Gazette listing five variations of the name “rooibos” as prohibited marks or words. These are RED BUSH, ROOIBOSTEE, ROOIBOS TEA, ROOITEE and ROOIBOSCH. Interested parties had 30 days to submit comments to the registrar of trademarks; next a final notice will be published declaring these marks to be prohibited under the Merchandise Marks Act.

The impact of such a move on the French case is that although the member countries of the Agreement on Trade-Related Aspects of IP Rights are obliged to protect geographic indications, the European Union has refused to recognised geographic indications that have not also been protected in South Africa. However, now that rooibos and derivations thereof are in the process of being declared prohibited marks under the Merchandise Marks Act, the European Union has agreed, under the recent Economic Participation Agreement with South Africa, to accept the protection of rooibos as a geographic indicator. Therefore, all EU member states will be prohibited from using any of the prohibited terms, unless express permission is obtained from the South African Rooibos Council, which has the right to control use of the prohibited terms. Further, the Office for Harmonisation in the Internal Market (the EU trademark office) would be required to refuse trademark applications containing any of the prohibited words.

It will be interesting to see whether the South African Department of Trade and Industry will consider prohibiting through the Merchandise Marks Act the use of words or marks relating to other South African natural resources, such as Honeybush tea and Karoo lamb.