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Beating about the Rooibos

It is a fact of life that attempts have been made in certain other countries to usurp control of the term or mark Rooibos, despite the fact that it is a well-known South African description for a particular plant which gives rise to Rooibos tea.

The term Rooibos is as typically South African as braaivleis and biltong. It is really part of our South African heritage. The South African authorities have, nonetheless, taken no concrete or effective steps to protect and control the use of this term in South Africa or elsewhere.

Probably the first attempt to hijack Rooibos in another country took place in America roughly 10 years ago. After protracted legal battles, South African interests prevailed and registrations of the term for tea products in the United States held by local traders were cleared away. A similar episode is now taking place in France. This was reported in the Sunday Times of 3 February 2013. Application has been made by a French company to register Rooibos as a trade mark in respect of beverages in France and, thereby, to secure a monopoly in its use - and we are about to have a replay of the American episode.

No protection in place in South Africa

As pointed out in the Sunday Times article, the French attitude to South African objections to the registration of the term Rooibos by a local French trader is that such objections must be based on the existence of protection for the term in South Africa, and that without having local South African protection, objectors do not have a leg to stand on. Alas, there is currently no such protection in place in South Africa and it is manifest that the South African authorities have been beating about the bush for at least the past 10 years and have failed to secure protection for Rooibos in its own back yard. The French attitude is reasonable because the World Trade Organisation's TRIPS Agreement (Agreement on Trade Related Aspects of Intellectual Property) clearly specifies that a country cannot claim that a so-called "Geographical Indication" ("GI") (which Rooibos is in the international context) is entitled to international protection unless the term is protected in the home country. South Africa is a member of this agreement and the government is well aware of its terms. The fact that we on occasions pay lip services to the agreement is beside the point.

According to the Sunday Times article, the South African Rooibos Council (SARC) has applied to register Rooibos as a Certification Mark under the South African Trade Marks Act, which registration is intended to serve as the basis for international protection granted to GIs. The article rightly says that it is a complex and time-consuming process to obtain a Certification Mark registration, and it requires a body of rules to be established regulating the circumstances and conditions subject to which the mark can be used. The Sunday Times describes this process as a "legal quagmire".

The criterion of having distinctiveness

While it is correct that the Trade Marks Act makes provision for the registration of Certification Marks and Collective Marks, it is doubtful whether either of these facilities are appropriate in the case of Rooibos. A Certification Mark is a mark that is capable of distinguishing goods certified by one person in respect of various characteristics (including geographical origin) from other uncertified goods. A Collective Mark is a mark capable of distinguishing the goods of persons who are members of an association from the goods of persons who are not members thereof. Both of these types of marks must, however, meet the criterion of having distinctiveness, which is laid down for registration of any form of trade mark under the Trade Marks Act. While the expert authorities concede that, in the case of a Service Mark or a Collective Mark, the criterion of distinctiveness will not be as strictly applied as would be the case in respect of a conventional trade mark, the fact remains that both Certification and Collective Marks are required to be distinctive in order to be registrable.

While the principle of "distinctiveness" under Trade Mark Law is a complex one and many court cases have been fought on it, the basic departure point is that a mark that is purely descriptive in respect of the goods for which it is used cannot be distinctive. For instance, the word bread cannot be registered as a trade mark in respect of bread. That term is incapable of identifying and distinguishing one baker's product from the equivalent products made by others. Moreover, an ordinary descriptive word in one language cannot be registered in another language that is commonly known is South Africa.

The word Rooibos is defined in the Concise Oxford Dictionary (note the English Dictionary!) to mean "an evergreen shrub of the genus Aspalathus with leaves used to make tea; a shrub or small tree, Combretum apiculatum, with spikes of centred yellow flowers". A search for Rooibos using the Google search engine brings up similar information. In other words, the word Rooibos is considered to be part of the English language and it is entirely descriptive of the very product to which the term is applied in trade. This situation brings to mind a recent case in which the court held that the word lotto, although commonly accepted in South Africa to designate the State Lottery, being an ordinary dictionary word in the English language, was not registrable as a trade mark in respect of a lottery. While it is true that a descriptive term can acquire distinctiveness through extensive use, it is open to some doubt as to whether a generally accepted generic term can be said to be distinctive, in the trade mark sense, of the goods to which it is applied, namely, in this instance, Rooibos for tea.

A solution is at hand

However, despair not! A solution is at hand. Section 15 of the Merchandise Marks Act, 1941, provides that the Minister of Trade and Industry may, after such investigations deemed appropriate, by notice in the Government Gazette, prohibit either absolutely or conditionally, the use of any mark, word and the like in connection with any trade, trade mark, mark or trade description applied to goods. The provision has been used in the past to protect marks such as the Winged Springbok of South African Airways, SABC/SAUK, various markings used in connection with Dutch cheese, UNICEF, the Olympics symbol, and various FIFA marks used in relation to the World Cup. This provision is eminently suitable for granting appropriate protection to Rooibos. Unlike the Trade Marks Act, the Merchandise Marks Act does not require a mark to be distinctive in order to enjoy protection and no formalities, conditions, rules for use, etc must be provided in order to secure the protection. The Minister can simply publish a notice in the Government Gazette, as has been done on numerous instances in the past, prohibiting the use of Rooibos in relation to beverages unless they comply with the generic description mentioned previously and are produced in South Africa. This is a simple and effective means of protection, which can be obtained within a matter of a couple of months and with the minimum of fuss and bother.

One cannot believe that the Minister of Trade and Industry would have any objection to granting protection under the Merchandise Marks Act to Rooibos, an item of national heritage, when he has been prepared to grant this protection in the instances previously mentioned and, most pertinently, in connection with Dutch cheese.

This solution that is being advanced is not a new one; indeed, it was suggested to the DTI around 10 years ago at the time of the American saga. However, as is unfortunately invariably the case, the DTI is generally not receptive to any suggestions or advice coming from the specialist intellectual property community in South Africa, no matter how sensible and well-intended they may be.

Really, it is time for the government to stop beating about the Rooibos and to take prompt steps to achieve protection for this item of national heritage and to bring about much needed service delivery in this area, thus paving the way for important international protection for Rooibos as a GI.

The DTI commented to the Sunday Times that the so-called "Traditional Knowledge Bill", once it is passed (o woeful day!) will provide protection for GIs. It is true that the Bill purports to grant such protection, through registration under the Trade Marks Act, but once again the government is not seeing the wood for the trees, because, as has been pointed out ad nauseam by the specialist intellectual property community, any registration under the Trade Marks Act must comply with the basic principles of Trade Mark Law and so the requirement of "distinctiveness" will apply, which brings us back to square one. This is yet another illustration of just how ill-conceived and inoperative the Traditional Knowledge Bill is. The government's obsession with the Traditional Knowledge Bill and its refusal to heed the criticism and advice of the specialist intellectual property community in regard to it is, unfortunately, a case of "none so deaf as those who will not hear".

The solution to the problem of protecting the term Rooibos is straightforward and at hand, and all that is required is for the government to shake off its prejudice and inertia and do the necessary. It is a travesty that it has not already long since done so.

About Owen Dean

Professor Owen Dean is a former partner and chairman of Spoor & Fisher, specialist intellectual property solicitors, and holds the chair of intellectual property law at Stellenbosch University.

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