What's in a name? L'Affaire Rooibos

It has grown from something of a South African idiosyncrasy to le breuvage de choix of many residents of Europe - and recent developments in France indicate that rooibos tea may urgently require greater protection in the intellectual property arena.

It came to the attention of the South African Rooibos Council that a French concern by the name of Compagnie de Trucy intended to trademark the name Rooibos in France.Were the company to succeed, it could then prevent any South African companies from selling their product under the rooibos name in France.

The Council accordingly filed an observation with the French trademark authority that it opposed any single company being given the right to use the word rooibos commercially in that country, and demanding clarification regarding the actual intentions of the Compagnie de Trucy. Naturally, this meant drafting the communication in French, as no other language would be entertained.

With export sales of rooibos estimated at around R600 million per annum and the EU accounting for around 70% of exports, South African producers can ill afford to let the IP associated with their product fall into foreign hands. This is not the first time that they have faced off-shore attempts to trademark the name: a similar legal battle (involving Burke International) in the US in 2005 resulted in an out-of-court settlement, while another French company was successfully fended off in 2012.

Despite this, protection of rooibos tea has been slow in coming in South Africa. The Department of Trade and Industry published a notice announcing its intention to limit the use of "rooibos" to refer "to the dry product, infusion or extract of the plant Aspalathus linearis". This notice was published for public comment in July 2013, and the SA Rooibos Council sees it as the first step towards securing Geographical Indication status for the product, which would ensure that it was protected in the EU market.

There are differing legal opinions regarding this, as one of the tests would be whether or not rooibos is a generic term. Botany and linguistics may well become the subject of lengthy and detailed debate but this is an excellent example of just how valuable an apparently everyday name can be.

Date published: 2013/08/01
Author: Spoor & Fisher

Tags: general ip news france french trademark eu market europe sa rooibos council