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.