Member Article

Protection of the use of the term “Rooibos” has long been a topical issue.  However, an economic partnership agreement between Southern African nations and the European Union (EU) has recently been signed which will secure geographic indicator status for rooibos tea in the EU.  This is the latest in a number of acts by the South African government which has secured intellectual property protection for the indigenous brew.

Trade and Industry Minister, Rob Davies has said that this agreement means that only the rooibos tea manufacturers of South Africa will have ownership of that particular name and the term may only be used in relation to products that come from, and are approved by the relevant regulatory authority.

The intellectual property dispute over the use of the word Rooibos started in 1994 in the United States, where the word was registered as a trade mark at the United States Patent and Trademark Office (USPTO) by a skincare company, Forever Young.  Thereafter, the trade mark was sold to Burke International which attempted to enforce their rights in the trade mark in the United States against various entities using it, including the large South African company Rooibos Limited, but also against poor cooperative farmers who relied on the sale of their rooibos products as a financial means of support.  The registration was opposed by various entities including Rooibos Limited, on the ground that the word was merely a generic term meaning “red bush” in Afrikaans and as such could not perform a trade mark function or, therefore, be registered as a trade mark.  There were many years of litigation and ultimately Burke International and Rooibos Limited entered into a settlement ending Burke’s monopoly over the word “Rooibos” in the USA and elsewhere.

More recently, a French company applied to register Rooibos as a trade mark for beverages and once again the South African government stepped in, with the Department of Trade and Industry (DTI) lodging an objection with the French Embassy in South Africa and the European Commission Delegation in Pretoria.

It is possible to obtain legal protection for a geographical indication in various parts of the world, such as in the European Union, where it is possible to register a name as a “Protected Designation of Origin”, if all stages of production of a product occur in a particular area, or as a “Protected Geographical Indication” if at least one stage of production occurs in a particular area.  South African law did not initially have any specific protection for “geographical indications”.  It has always been possible to register a trade mark as a “Certification Mark” or a “Collective Mark”. These are marks which are intended for use and registration by industry bodies, with a certification mark being used in relation to goods that have been certified by the industry body as having certain characteristics (such as being of a particular kind or quality or having a particular geographic origin)  and a collective mark being used by members of an organisation or association to indicate that it belongs to the particular organisation.  In addition, section 15 of the Merchandise Marks Act (MMA) provides for the Minister of Trade and Industry to prohibit, absolutely or conditionally, the use of any mark or word in connection with any trade or business. The unauthorised use of a prohibited mark or word amounts a criminal offence.

As a result of the Rooibos furore in France, on 14 February 2014, the DTI gave notice of its intention to prohibit the use of a large number of European food and drinks names and also declared Rooibos to be a prohibited mark under the MMA.  Furthermore, the Traditional Knowledge legislation or the “Intellectual Property Laws Amendment Act 28 of 2013” is now in force in South Africa and has codified the concept of a “Geographical Indication” which it defines as “an indication which identifies goods as originating in the territory of the Republic or in a region or locality in that territory, and where a particular quality, reputation or other characteristic of the goods is essentially attributable to the geographic origin of the goods, including natural and human factors”. This provides specifically that geographical indications can be registered as certification marks or collective marks.

Interestingly, the Minister has also secured geographical indicator status for “Honeybush” (a tea with similar qualities to rooibos) and “Karoo Lamb” as well as certain South African wines, such as those from Robertson.

Rooibos was always an appropriate candidate for geographical indication status for various reasons, including:

• it is only grown in a certain region;
• the unique characteristics of the plant are as a result of the climatic and geographical conditions where it occurs; and
• there is traditional knowledge in existence about the plant, the way it is to be cultivated, harvested, processed and its beneficial properties.

There are various additional benefits to securing geographical indication status outside of securing ownership of the term for rooibos tea manufacturers in South Africa.  For example, with geographical indication status there comes some quality assurance over the product.  For example, there are guidelines on production of a product with geographic indicator status, so that all products are of the same high quality and there is more control over the production of the product, which is produced in an endangered ecosystem.

From a trade perspective, the reciprocity between the EU and Southern Africa in terms of the economic partnership agreement is beneficial.  Outside of the benefits to rooibos tea manufacturers in South Africa who will have exclusive rights to use the name, there have been other trade benefits such as an increase in the volume of local wine that can be exported from South Africa to Europe on a tariff-free basis and the amount of sugar that can be exported to Europe on a tariff-free basis.  Europe has used geographical indicator protection as a means to increase the price of certain unique local produce and South Africa can hope to do the same. 
 
It will be interesting to follow the future development of this form of intellectual property protection in South Africa and the implications for local industry.

For more information on the above, please contact:

Dr Joanne van Harmelen
senior associate IP
+27 82 770 5396
[email protected]