Global IP Debate Over Rooibos Intensifies As More Claims Surface

In light of increasing attempts to trademark the South African product rooibos, rooibos tea industry stakeholders are considering a call for an audit of the product’s trademarks registered in the world, in order to inform the best strategy to protect it as a unique South African product.

Rooibos is endemic to South Africa and the herbal brew is considered part of South African tradition. But it has also now become a staple in tea shops around the world.

Earlier this year, the South African government and the South African Rooibos Council went on the defensive when news broke of a French company’s attempt to register a trademark for rooibos.

The South African Rooibos Council lodged an “observation” with French authorities so that their objection could be noted.

Subsequent to these actions, it was revealed that South African company Forever Young (PTY) Limited, now known as Annique Health and Beauty, had the trademark for rooibos in France.

Soekie Snyman from the Rooibos Council said that because the council had such a short time frame to lodge their objection with French authorities, it did not have time to consult and find out who held trademarks for rooibos and where.

Annique Health and Beauty itself had to check its own records to determine if it owned a trademark for France and when it was so confirmed, Annique notified the South African Rooibos Council.

Snyman said: “They were in a better position to object. A company that already has a registered trademark (in France) is in a better position to object because we do not own the trademark.”

The CEO of Annique, Ernest du Toit, said the company had owned the trademark for rooibos in five countries, including Brazil, Italy and Mexico. But those three registrations have now lapsed. The registrations for the rooibos trademark held by the company are still valid in France and China, the company said.

Du Toit said he is prepared to hand over the company’s registrations of the Rooibos trademark if a government agency looking to protect rooibos is established, “because that is where it belongs.”

Meanwhile, Martin Berg, the managing director of Rooibos Limited, the biggest producer and seller of rooibos in South Africa, said that the various trademarks registered for rooibos are not necessarily problematic if they are not exclusive.

“Lots of people round the world buy rooibos from us and have [a] brand. They can call it xyz rooibos and then they trademark it and they have a disclaimer against rooibos. There are hundreds of products with the name rooibos.”

Snyman of the Rooibos Council reiterated the point: “It is not a bad thing to trademark rooibos. If they apply for a name (for example) xyz rooibos it may be a sign that they are committed to developing the product [and] that they just want to protect their investment. It doesn’t mean that they are trying to claim exclusive rights to rooibos.”

Subsequent to the initial application earlier this year by a French company to trademark rooibos, the SA Rooibos Council has confirmed that two other French companies have also filed trademark applications for rooibos since then.

Trade and Industry Minister Rob Davies said that government is aware that several rooibos trademarks have been registered. “That is one of the concerns,” he said. “We have to evaluate all of that … [in order] to get a sense of the landscape.”

Davies has previously confirmed to Intellectual Property Watch that geographical Indication (GI) status for rooibos is currently being sought in the European Union. But it will require securing GI status in South Africa first, something that is currently in the works (IPW, Developing Country Policy, 23 August 2013).