Deidre Baartman
Deidre Baartman

Stealing rooibos

It has recently been reported that an unidentified French firm is attempting to register a number of trademarks including the terms “South African rooibos” and “rooibos”. It is not the first time a foreign company tried to trademark rooibos tea.

I have two problems with the fact that the French want to trademark rooibos. Firstly, can they legally do this because rooibos is indigenous to South Africa? I don’t see where they will find rooibos somewhere else in the world. Secondly is the hypocrisy of this whole situation.

French law
The French system is called the Appellations D’Origine Contrôlées (AOC). This system is originated from the idea of terroir – the idea that the product’s quality comes with the territory. As one Australian wine critic describes it: “Terroir … translates roughly as ‘the vine’s environment [,]’ but has connotations that extend right into the glass: in other words, if a wine tastes of somewhere, if the flavours distinctly make you think of a particular place on the surface of this globe, then that wine ie expressing its terroir.”

It is basically the idea of an “essential land/quality nexus”. The French law defines an AOC as a region or locality name “that serves to designate a product of that origin whose qualities or characteristics are due to the geographic milieu, which includes natural and human elements”. (Code de la Propriété Intellectuelle [C Prop Intell] art L 721 – 1.)

The French AOC laws are very broad with regards to interpretation and we see this when the producers of sparkling wine from the Champagne region were able to successfully stop Yves Saint Laurent from marketing a perfume called “Champagne”. France fought hard to ensure that champagne, bourbon and Roquefort dressing are not trademarked in other countries, which boggles my mind because why then attempt to trademark rooibos? You don’t want countries to trademark your “exclusively made in France” products but then why are you trying to do the same to another country?

Geographical indication names v generic names
Geographical indication (GI) terms according to article 22 (1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (Trips) agreement is “[a] geographical indication” identifies goods that originate from a particular place “where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin”.

Generic terms are words that have become common use in describing a type of product. Examples of generic terms (previously trademarked) are “eau de cologne”, ”Dijon mustard”, ”Vienna sausages”, “escalator”, “cellophane”, “camembert”, “Parma ham” and “Parmesan cheese”.

As the department of trade and industry (DTI) highlighted: “As all South Africans know, rooibos tea is made from the leaves of a unique shrub, indigenous only to South Africa.” South Africa would easily be able to prove that rooibos is a GI and not a generic term. In my own home when someone asks for tea they will distinguish between rooibos and ”normal” tea.

This geographic indication must firstly designate the place where the product was produced and that the place is known to produce that item with particular desirable qualities. So if France wants to use the term rooibos the same way Burke International did in 2005, it will need to prove that rooibos is a generic term in France.

International trademark law
South Africa is a signatory to Trips as well as the Paris Convention.

Paul Heald describes the Trips provision as the “increased protection of geographic indications should provide incentives for underdeveloped member states to develop local industries and market agricultural products worldwide under an exclusive indication of source”.

The South African DTI should be able to trademark rooibos in the same way other GI names such as champagne, port and sherry are trademarked. And while at it, it would be a good idea to trademark honeybush, buchu and hoodia as well. Just in case, in terms of according to Art 22(2)(b) of Trips: “Any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).”

The convention obliges member countries to grant proprietors of well-known trademarks the right to prohibit the unauthorised use and to object to the unauthorised registration of their marks in member countries.

Conclusion
Sometimes the case does not always go the bona fide party’s way even though South Africa has a strong case with this rooibos issue and thus it will be up to the DTI to protect South Africa’s intellectual property rights by registering the geographical indication for rooibos.

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  • 11 Responses to “Stealing rooibos”

    1. Momma Cyndi #

      You’d at least expect the person who is registering it to be able to pronounce it!

      Way back in the very late 1980′s an American firm actually tried to patent Rooibos as an ingredient. I was under the impression that we put legislation into place to prevent that from happening. It is as preposterous as someone registering the name or ingredient ‘garlic’.

      February 25, 2013 at 5:00 pm
    2. Rich Brauer #

      Wow.

      There’s so much wrong with this post it’s pointless to try to address them all.

      So let’s start with: “Trademark” and “geographical indication” aren’t related. They’re definitely not interchangeable.

      Moreover, the problem lies entirely within South Africa. Were Parliament to act to protect indigenous products with GIs, they’d not only be entirely within their rights, they’d solve the problem. So take it up with the MPs, not the French.

      Oh, and one last thing: Bourbon is an American product.

      February 25, 2013 at 8:31 pm
    3. Grant Walliser
      Grant #

      Damned right! Paws off our tea. Thanks for pointing this out.

      February 26, 2013 at 8:51 am
    4. Zeph #

      The French are Hypocrites? Well I never….
      But I do agree with Rich Brauer to a point. Our government and parliament is completely reactionary. They are always ‘shocked’ or ‘horrified’ by events.
      A bit of nous would go a long way to rid them of their all too frequent shock and horror.
      What is fair and what is legal are two different things. If a party fails to protect what is theirs they should be held liable for negligence. Now that phrase would be met with ‘shock’ and ‘horror’ by our own parliamentarians.

      February 26, 2013 at 10:25 am
    5. Mandisa #

      The gall that these French people have…Let them stick to their champagne and leave our rooibos alone..Deidre,can you please forward this e-mail to the DTI so that they can act fast on this issue. Somecountries can be very arrogant and undermine countries that they deem to be “third world”

      February 26, 2013 at 12:23 pm
    6. Deidre Baartman

      Hi Cyndi, I will reply to your comment simultaneously in my reply to Rich.

      Hi Rich, my article is in terms of International law as well as French Law (with simple reference to SA’n Law) but in no way is this a SA’n Law case.

      In SA’n Law your comment regarding “Trademark” and “geographical indication” is true. In International Law and French Law it is not. The TRIPS and Paris Convention makes specific reference to trademarks which are GIs which is the context I was writing this article in. Ironically enough the increased protection for GI’s was due to French pressure back in the day.

      Secondly, Rooibos is trademarked in SA but as I have stated before this is not a SA’n case. The French are trying to trademark Rooibos in France specifically which means that 1) there are international standards (i.e. TRIPS and Paris Convention) and 2) the mark / GI must be trademarked in terms of French Law. If for example Rooibos was not trademarked in SA and the French wanted to trademark it in SA then they would have to comply with 1) international standards and 2) SA Law.

      With regards to Bourbon, I know very well that the county is in Kentucky but in terms of international law that is irrelevant. The Bourbon case must be seen in context of reputation and GI and not GI alone. See Ladas (1975) where the relevant parties came to an agreement that “Calvados” would be protected as a GI in the USA and “Bourbon” as a GI in France.

      I hope this clears up some of the…

      February 26, 2013 at 1:29 pm
    7. Great post. Read Intellectual Property Watch’s article about the quest for control of the term ‘Rooibos’ here: http://bit.ly/WuMPoy

      February 26, 2013 at 7:35 pm
    8. bernpm #

      Send the French Prime Minister a box of SA Champagne and a box of SA produced Cognac. Both products labelled as such.

      Make it a lovely official occasion with the international press all around, celebrating 14 July (or something else French)….and sit back!

      February 27, 2013 at 11:20 am
    9. Momma Cyndi #

      Deidre Baartman

      Thank you.
      It is terribly complicated! One would think that a simpler format would have been found – some kind of international medium ground

      February 28, 2013 at 3:18 pm
    10. ori #

      i recommend you have a look on this movement new page, one of their goals is the issue of fair trade.
      http://www.facebook.com/YalaAfrica

      March 6, 2013 at 12:13 pm
    11. spencer #

      What has happened, in the meantime, to the taste, and flavour of our ROOIBOS TEA… it’s become shocking, and tastes like “dish water”….!!!!

      Please excuse me for being so direct – but I not the only one who is complaining…..

      I noticed this in a very serious way – last year (2013) already….

      thanks….

      March 5, 2014 at 5:59 pm

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