The following article provides an insightful overview of the issues surrounding rooibos and its IP and geographical indicator status. The article appeared in the Mail & Gaurdian and was written by Lynley Donnelly.
Rooibos war no storm in a teacup
South Africa is still battling after eight years to protect rooibos against trademark troubles.
South Africa’s rooibos industry has been on tenterhooks following a second attempt this year to trademark the unique and beloved local tea in the European Union.
Despite a threat to the term rooibos first rearing its head almost a decade ago, South African authorities have only recently begun to take effective steps to protect the term locally, something required before it can be protected in places such as the EU.
Last week the South African Rooibos Council, with the help of the department of trade and industry, filed an observation with French trademark authorities objecting to the move by a French company to trademark the name rooibos.
According to Soekie Snyman of the South African Rooibos Council, the French company sought to trademark rooibos with another word. “It is not clear if the company wanted to register the term, without seeking exclusivity on the name rooibos, or if they are indeed seeking exclusivity to the word rooibos,” she said.
Because of the uncertainty, the council had to submit its concerns to the French authorities or South African companies might not be allowed to export products using the name to France, nor could French companies selling rooibos products use the term, she said.
At the heart of the problem
Rowan Forster, director of intellectual property at the law firm ENS, said that at the heart of the problem, was the fact that there were no South African laws protecting rooibos as a geographical indication.
According to the World Trade Organisation (WTO), a geographical indication is a place name used to identify the origin, quality, reputation and other characteristics of a product. Products protected in this way include Champagne, Tequila and Feta. Under EU law a product must be protected in its home country before it can be given this status. But efforts to provide for geographic indications in local law have been hampered. The Intellectual Property Laws Amendment Bill, which attempted to address the issue and provide protection for broader traditional knowledge, was referred back to Parliament by the president last year because of several shortcomings.
Since there was no clear legislative protection, the council had been “pursuing all available alternatives” to protect the rooibos name, Snyman said.
The first of these was the application to register rooibos as a prohibited mark under the Merchandise Marks Act, published in the Government Gazette on July 12. Forster said that this would protect what was a generic term from being trademarked in South Africa and would provide evidence to European authorities that the term was protected under domestic legislation.
Snyman said the process had also allowed the council to propose regulations dealing with the labelling and use of the term rooibos. This was aimed at ensuring that manufacturers who used rooibos as an additive in products did not claim its benefits when it constituted only a minuscule part of a product’s ingredients.
According to the council, dry rooibos and extracts, liquors and infusions of the plant are used in many products, including herbal teas and fruit juices, as well as in health and beauty products, thanks to its skin protection and anti-allergenic characteristics.
The council had already received queries from some local manufacturers outside the rooibos industry, she said, but the council was open to engaging with those concerned. “It is in everybody’s interest to protect the reputation of the product,” said Snyman.
Other steps to shore up protection for the tea include plans to apply to the department of agriculture, fisheries and forestry to have rooibos protected under the Agricultural Product Standards Act, she said. The department of trade and industry did not respond to a request for comment but, after a similar effort by another French company to trademark rooibos earlier this year, the minister, Rob Davies, said government was working hard to protect the brand and had raised an objection with the French embassy and the European Commission delegation in Pretoria.
Willem Engelbrecht, chairperson of the council and a rooibos farmer, said that as the popularity of the tea grew it was increasingly important that legislative safeguards are put in place. Germany, the United Kingdom, the Netherlands, the United States and Japan were the top five importers of the tea last year. But other destinations include China, Taiwan, Singapore and Slovenia. In total, about 5 500 tonnes of rooibos was exported last year.
Unique products need protection
Protection of unique South African products such as rooibos has been delayed as the state grapples with appropriate legislative measures. The trade and industry department’s Intellectual Property Laws Amendment Bill, which aimed to do this, was referred back to Parliament by the president last year.
Earlier this year MP Wilmot James, the democratic alliance spokesperson for trade and industry, submitted a private members Bill to Parliament — the Protection of Traditional Knowledge Bill — to address the shortcomings of the state’s Bill, which was widely critiqued by local experts. According to James, the department “muddled things” by saying the Intellectual Property Laws Amendment Bill could serve to protect a local product such as rooibos.
The Bill provides for certain protected marks to be recognised as geographical indications, but this added no extra protection to what was already available under existing laws.
“It also still has the problem of the requirement of distinctiveness. For a traditional mark to be protected under the Intellectual Property Laws Amendment Bill it needs to meet the requirements of a trademark, which include distinctiveness,” James said.
For similar reasons, rooibos could also not be protected under the Bill he introduced, he said. The South African Rooibos Council’s move to declare it a prohibited mark under the Merchandise Marks Act, which has no requirement for distinctiveness, appears to be the best approach, said James.