Geographical Indication ROOIBOS tea

Mark Opanasiuk, Class: IP Issues in Food and Agriculture

QUESTION: How are the GIs protected in the country of origin? Are the GIs protected as trademarks, certification marks, or through another form of intellectual property protection?

ANSWER: The name ROOIBOS is protected in SA under Merchandise Marks Act of 1941. In terms of section 15 (1) of this Act the Minister of Trade and Industry can prohibit (absolutely or conditionally) the use of any mark, word, letter or figure or any combination thereof, in connection to any trade, business, profession, occupation or event, or in connection with a trade mark, mark or trade description applied to goods.

On September 6, 2013 the Minister published “The Final Prohibition on the Use of Certain Words” in connection with any trade, business, profession, occupation or in connection with a trade mark, mark or trade description applied to goods other than the use there of by SARC members or any other party in accordance with the “Rules of Use for Rooibos”:- ROOIBOS- RED BUSH- ROOIBOS TEA- ROOIBOSTEE- ROOITEE- ROOIBOSCHProprietors of prior identical or similar marks already in use were not affected by these amendments.

The labeling of ROOIBOS and the Rules of Use set the following:- The name Rooibos can only be used to refer to the dry product, infusion or extract of 100%

Rooibos derived from particular geographic area. - Rooibos can be blended with other products. In this case the % of rooibos should be stated

on labeling. Other than tea products can use rooibos name only if rooibos was the ingredient and it adds unique characteristics to the product.

SARC (SA ROOIBOS COUNCIL) represents rooibos tea producers in SA. This organization unites efforts of rooibos companies from SA in rooibos name protection in SA and abroad.

QUESTION: Do the GIs enjoy international protection? How are the GIs protected outside their country of origin? Specifically, are the marks protected in the U.S.? What exactly did protection entail? For example, was registration required?

ANSWER: In 2014 ROOIBOS received GI protection in the EU under South Africa Development Community - EU Economic Partnership Agreement (15 July 2014). It granted GI protection in EU also to Honey bush tea, Karoo lambs and SA vines from some regions.

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Also some SA companies exporters of Rooibos tea registered TM in different countries which includes word rooibos for tea (the relevant class of goods). For example: In 2005, Rooibos Limited registered a trademark with the Office for Harmonization in the Internal Market of EU (OHIM) for its stylized logo. Also company registered a trademark in August 2007 with the Benelux Office for Intellectual Property (BOIP) for “Cape Rooibos Nectar of Nature the Uniquely South African tea from the beautiful Cape”.

In United States the name “ROOIBOS” was fought in courts. Now all registered trademark applications make no claim to the exclusive right to the word “rooibos”. Any company can try to cancel registration of TM of other company at USPTO, if it thinks it violates its rights, or violate Langham Act. Thus, the name “rooibos” is used in combination with other elements to make a TM.

QUESTION: What kind of disputes have arisen as a result of the protection or lack of protection of the GIs?

ANSWER: In 1993 the american company Forever Young filed TM application to USPTO for the word “Rooibos” for use with skincare products and it was registered in 1994. It limited the exporting capabilities of SA companies to the USA, because they would be unable to market theirs tea as a rooibos tea. With the help of the South African and West Cape governments, the company objected to Forever Young’s registration, arguing that it was not valid because rooibos is a generic term in Afrikaans that simply means “red bush” and therefore cannot be protected with a trademark.

In 2001 the Rooibos TM was sold to Burke International which started “cease and desist” actions against all users of rooibos word in the USA (sellers, importers and online magazines of rooibos tea). Some of small companies decided to change the name of the product, but it confused the customers. Other companies argued for the cancellation of the Rooibos trademark.

In 2002 the Rooibos Limited (the largest exporter of the rooibos tea to the US) filed TM application for “Rooibos the Red Tea”. But it had the word “rooibos” and it was contented by Burke International.

In 2005 after almost $1 million in legal fees two companies reached a settlement. Two companies voluntarily and unconditionally cancelled their trademarks and applications on the exclusive right to the word “rooibos” in the USA and other countries. In 2006 Rooibos Limited finally registered at USPTO the TM for a stylized logo of a steaming cup with the word “Rooibos” outlined which was suspended in 1995. Burke International is an authorized reseller of healthcare products made from rooibos in the USA. Its owner (Ms. Burke-Watkins) owns a TM for a logo relating to rooibos registered in 2006, and updated in 2007.

In 2013 the French company was seeking exclusive ownership for rooibos name TM in France. The South African Rooibos Council has written to French authorities demanding clarification of the audacious move by Compagnie de Trucy, fearing that it could prevent South African companies from selling tea under the rooibos name in France.

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