Disputing a Name, Developing a Geographical Indication

Name: Rooibos
Country / Territory: South Africa
IP right(s): Geographical Indications and Appellations of Origin, Trademarks
Date of publication: April 4, 2011

Rooibos Tea – South Africa

Deep in the Cederberg Mountains, some two hundred kilometers north of Cape Town, South Africa, rooibos bushes dot the vast valleys and fields. At first glance, one might not expect that these rather unassuming, shrub-like plants hold remarkably beneficial nutritional and health properties. Known scientifically as aspalathus linearis, but commonly as “rooibos” (pronounced “roy-boss”– the Afrikaans word for “red bush”), the plant has been used by indigenous people – notably the Khoi and San – for generations.

The Cederberg region in Western Cape, South Africa(Photo: Flickr/Martin Heigan)

Did you know! – The traditional knowledge of the Khoi and San was limited to knowledge of the plant and its variety of health applications. It was only with the arrival of the settlers to the region – and their knowledge of tea making – that the local populations started to enjoy rooibos as a tea.

For generations, rooibos has been a healthy, aromatic tea for people all around the world and an important economic resource for farmers and processors in South Africa. High in antioxidants and caffeine-free, rooibos has a number of health and other applications, including providing relief from allergic symptoms.

The Khoi and San people shared their traditional knowledge on the plant, while early farmers developed the TK on processing the rooibos into tea. (Photo: Flickr/Paul Miller)

Intellectual property

Where intellectual property (IP) is concerned, the case of rooibos has had many positive and far-reaching implications for the South African rooibos industry, farmers and producers, and the IP system.

Although long and costly, the IP dispute surrounding the registration of rooibos as a trademark in the United States of America (USA) brought international attention not only to the unique properties of the plant, but also its link to the culture of the people in the Cederberg region and South Africa. This motivated the industry to unite around a common cause for the protection of rooibos, and finally, in 2014, rooibos received status as the first geographical indication (GI) for a South African product other than wine and spirits.

Goods with specific geographical origin

Rooibos is one of more than two hundred species of aspalathus that grow only in South Africa, but it is the only one with recognized health benefits.

Rooibos is endemic to a small area in the Cederberg mountain range of the Western Cape province and requires specific geographical conditions to grow. The region is predominantly arid, experiences hot, dry summers and cooler, wet winters. It boasts many sandstone and shale rock formations (some of which are up to 500 million years old), and vegetation is a mixture of mountain fynbos (Afrikaans for “fine bush”) and succulent Karoo plants. This floral diversity plays a pivotal role in generating the ideal soil conditions for rooibos.

Rooibos only grows in higher altitudes (200 to 1,000 meters above sea level) and has adapted to survive in the unique geographical conditions of the Cederberg mountain range. Roots of the plant extend two meters or more below the surface to reach water, which help the plant survive in the region’s generally arid conditions. The plant requires winter rainfall and its active growth starts in spring, increases towards midsummer and then declines with the onset of winter. Humidity, water availability, air temperature, slope angle, the coarse sandy soil and latitude all play important roles in the plant’s lifecycle. Shrub-like in nature, rooibos has a central, smooth main stem that subdivides into a number of strong offshoots near the surface soil. These offshoots are connected to delicate branches that bear soft, needle-like leaves up to ten centimeters in length. Left to grow in its natural environment, rooibos will reach a height of up to 1.5 meters. Cultivated plants may be anywhere from 0.5 to 1.5 meters, depending on their age and the climate and soil conditions.

Traditional knowledge

Although rooibos is an indigenous fynbos shrub, and not a traditional tea plant, it is harvested and processed in a similar fashion. The Khoi and San people are the original holders of the traditional knowledge (TK) of the plant, which they shared with the people who settled in the region. Historically, it is unclear who first discovered the bruising and fermenting process needed for the plant to be consumed as a tea. It is believed that early farmers developed over centuries the TK on the cultivation of the plant and the TK on processing the plant into tea, which is still used today in the cultivation and processing of rooibos. Farmers harvest the optimal plants, which are then chopped into smaller pieces. The pieces are then crushed and fermented in heaps before finally left to dry in the sun on tea courts. Oxidation occurs naturally through this process, which turns rooibos leaves from green to red and gives the tea its distinctive amber color.

Initially, the farming and processing of rooibos was done by small-scale famers, and the popularity of the tea was limited to the local level.

Commercialization

Rooibos remained unknown to the rest of the world until 1772, when local populations introduced the refreshing tea to Swedish botanist Mr. Carl Thunberg. Although he took some to Europe and wrote about it, the real potential of the plant was not recognized until 1904, when Mr. Benjamin Ginsberg, a Russian immigrant to South Africa, became interested in rooibos tea. Mr. Ginsberg – a descendant from a family who had been in the tea industry – started trading with the Khoi and San people for the tea. Through his efforts, rooibos tea quickly became popular throughout South Africa, and became known as the country’s unofficial national drink. Mr. Ginsberg’s enterprise even offered the tea internationally as an herbal substitute for more traditional tea plants (camellia sinensis), calling it “mountain tea”.

Mr. Ginsberg encouraged a local doctor, Dr. Lafras Nortier, to experiment with propagation (the process of creating new plants from existing plant material through different methods), which yielded promising results. Mr. Ginsberg took these results to local farmers and persuaded them to start cultivating rooibos seeds. Until then, farmers had only harvested wild plants, but cultivating the plants for sale was an appealing prospect for many of them, as it would bring in much needed income. As farmers started to cultivate the plant, Mr. Ginsberg worked to refine the rooibos tea making process and building commercialization efforts on a larger scale in South Africa and abroad. As more people became aware of the beneficial properties of rooibos tea, demand skyrocketed. To gain access to greater infrastructure and to reach more consumers, Mr. Ginsberg eventually supplied the tea to large national and international tea companies, which would package and sell rooibos tea under their own brands.

A glass of Rooibos tea (Photo: Flickr/
Jorge Rimblas)

In 1948, rooibos producers and farmers organized and formed the Clanwilliam Tea Cooperative (Tea Cooperative). Following the establishment of the Tea Cooperative, 1954 was a defining moment for the industry, as the South African Minister of Agriculture – at the request of the Tea Cooperative – established the Rooibos Tea Control Board (Tea Board). Tasked with revitalizing the rooibos industry, which suffered a collapse after World War II, the Tea Board significantly invested in regulating the product, stabilizing prices, improving quality and bringing rooibos tea back to the market. Starting out small with few resources, it was eventually able to lead the industry in its first definite steps towards real stability and prosperity. The Tea Board introduced modern equipment, refined production methods and increased distribution in an effort to allow rooibos to reach as many people and markets as possible. As production picked up, the popularity of the tea quickly spread, and with the help of the Tea Board the industry started to move back on track.

In 1993 the Tea Board privatized and became Rooibos Limited, a company which is one of eight processors of rooibos tea in South Africa and is today by far the largest and most established.  In April 2005, a number of rooibos industry role players – inclusive of producers, processors and other interested parties – collaborated to form the South African Rooibos Council (SARC). At this stage SARC was a voluntary organization with voluntary membership levies. It continued with its activities – focused on production and the promotion of Rooibos – until 2014, at which stage the voluntary levy system no longer generated sufficient funds to ensure the viability of the organization. In late 2014, SARC was reconstituted with the following packer/brander members: Rooibos Limited, Annique Health and Beauty, Cape Dry Products, Cape Natural Tea Products, National Brands Limited, Joekels Tea Packers, The Red T Company, and Unilever South Africa. Today, SARC is an independent, non-profit organization that responsibly promotes the interests of the South African rooibos industry locally and internationally. Through their collective efforts, SARC members have been able to engage and cooperate with key industry stakeholders through research and communication – such as the dissemination of information regarding the benefits of rooibos to consumers – for the benefit of the industry. Research and development, food safety, and certification also play important roles in the activities of SARC to protect the interests of consumers.

IP dispute resolution

Apart from the booming tea industry, rooibos has many other applications, one of the most popular being the use of rooibos in cosmetics and skin care.

Ms. Annique Theron, a South African mother struggling with an infant suffering from colic (a condition of crampy, abdominal pain common in babies), was the pioneer of using rooibos in cosmetics and skincare. In 1968, she accidentally stumbled upon the soothing benefits of rooibos for her baby. Ms. Theron put some leftover rooibos tea in her baby’s bottle and discovered that it had a calming, soothing effect, and quickly relieved her baby’s symptoms. Thinking she was on to something, she decided to research the anti-allergic properties of rooibos. After some time working with many other mothers, she found that rooibos was helpful in alleviating a variety of symptoms, such as food allergies, dry and irritated skin, insomnia and hyperactivity in babies and children. Excited to share her discoveries with the world, she wrote a book on the subject called Allergies: an Amazing Discovery, which was published in 1970.

Ms. Theron’s book led to a lot of publicity for rooibos and a renewed interest in the plant and how it could be used in cosmetics and medicines. Ms. Theron’s followed up her book’s success with the launch of new company – Forever Young – and a line of rooibos-infused health and skin care products. Forever Young’s products became very popular, especially in North America and Europe, and created an increased demand for all things rooibos. As a result, the industry experienced another positive turning point, as farmers and companies cultivated more rooibos to keep up with the surging demand.

With demand soaring in the USA, Forever Young decided to file a trademark application for the word “Rooibos” – as it relates to use in skincare products – with the United States Patent and Trademark Office (USPTO) in 1993. It was registered in 1994. When Rooibos Limited heard of this, the company was concerned that the trademark of the word rooibos by one company may have a negative effect on other companies entering the US market. With the help of the South African government, Rooibos Limited objected to the registration by Forever Young, arguing that it was not valid because “rooibos” is a generic word and therefore cannot be monopolized by any one company.

Since it the IP dispute resolution, Burke
International registered a stylized
trademark (USPTO Registration No.
3232510)

The dispute continued and did not garner much attention until after Ms. Theron retired in 2001. When she did, she sold the trademark for US $10 to her agent in the USA, Ms. Virginia Burke-Watkins, of Burke International. Through her company, Ms. Burke-Watkins then started sending “cease and desist” letters to a number of small tea cafés and Internet resellers. The letters informed such establishments that their use of the “Rooibos” name was infringing on her trademark, and as a result they were required to pay Ms. Burke-Watkins US $5,000 in compensation. Demands were even made to South African companies. Many of these small enterprises tried to get around the trademark by calling their products “Red Tea” or “Red Bush”, but this brought a great deal of confusion to consumers. Other companies, from small cafés to larger enterprises like Rooibos Limited, fought back and argued for the cancellation of the “Rooibos” trademark.

While these IP legal battles were being waged, Wupperthal Cooperative, which represents smallholder farmers, got involved and the media took notice. Cooperative farmers were experiencing the same challenges exporting their rooibos to the USA, because they kept running into legal obstacles based on the trademark registration. Burke International restricted the use of the term “rooibos” to only those companies that were prepared to enter into a business relationship with Ms. Burke-Watkins. This requirement would have tied farmers (both smallholder and commercial) into trade relationships which were not fairly negotiated and possibly detrimental. Following the publicity this generated, a number of major coffee houses and retailers in the USA threw their support behind Rooibos Limited and the litigation process.

The livelihood of all rooibos farmers was being threatened by this destructive name registration issue and we had to do something about it

Mr. Martin Bergh, managing director of Rooibos Limited

In 2002, in order to market its products in the USA, Rooibos Limited filed a trademark application with the USPTO for “Rooibos the Red Tea”. However, because the trademark included the term “rooibos”, it was also subject to contention from Burke International. For the sake of the rooibos industry as a whole, and with the media on their side and increasing support from the tea industry, Rooibos Limited decided to continue to pursue its legal battle with Burke International. In 2005, after ten years and nearly US $1 million in legal fees, the two companies reached a settlement. Both companies voluntarily and unconditionally agreed to cancel their trademark registrations on the exclusive right to the word “rooibos” in the USA and other countries.

“The livelihood of all rooibos farmers was being threatened by this destructive name registration issue and we had to do something about it,” said Mr. Martin Bergh, managing director of Rooibos Limited. “We needed to provide the farmers predictable, unhampered markets such as the USA for the distribution of their quality rooibos teas,” he said, after the announcement of the agreement. “We are thrilled after all these years and thousands of dollars to help these growers, as well as all USA tea manufacturers, retailers and food service venues to openly and honestly share our national treasure, rooibos.” This settlement meant that in the USA the word “rooibos” became a generic term and thus part of the public domain, free for anyone to use.

Geographical indications

Rooibos meets all of the requirements for GI protection, as defined in the World Trade Organization (WTO) Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement): it is only grown in one part of the world and the properties of the plant are a direct result of the unique geographical conditions in which it grows. Furthermore, the knowledge of the rooibos plant and the cultivation expertise is unique to South Africa, as it only occurs here. The plant is truly part of South African identity.

In 2008, the Minister of Trade and Industry recognized the importance of protecting South African GIs, such as rooibos, and submitted the Intellectual Property Laws Amendment Bill to parliament. SARC and the rooibos industry championed for the registration of rooibos as a GI for a number of reasons. Firstly, GI registration helps protects the name from misuse and imitation, while allowing all those involved in the rooibos industry in the region – from farmers to exporters – to use it without fear of litigation in foreign markets. Secondly, a GI comes with specific guidelines for how a product should be produced, and this will ensure that all rooibos is of the same high quality. Thirdly, it adds value to rooibos, and a GI would put more power in the hands of the farmers and producers. Fourthly, because the GI links an area to a product, it would be a powerful marketing tool for the region and could be used to promote other activities such as tourism. Lastly, rooibos is produced in a fragile ecosystem, and GI registration will help protect the unique biodiversity of the region.

Although rooibos was one of the main considerations for the initial proposal of the Bill in 2008, it was not until 2014 that the enactment of Intellectual Property Laws Amendment Act 28 (2013) successfully amended the Trade Marks Act (1993) in order to provide for the recognition, recording and registration of indigenous terms and expressions as trademarks. Furthermore, this Amendment codified the concept of GIs for products other than wines and spirits within the domestic legislation. Such GIs are defined in the Amendment as “an indication which identifies goods as originating in the territory of the Republic or in a region or locality in that territory, and where a particular quality, reputation or other characteristic of the goods is essentially attributable to the geographic origin of the goods, including natural and human factors”, and may now be registered as collective marks or certification marks in South Africa. These types of trademarks are intended for use by industry bodies that represent membership within an organization or association (as in the case of collective marks), or represent goods as having a certain quality or characteristics (as in the case of certification marks).

Furthermore, Section 15 of the Merchandise Marks Act, 1941 (MMA) provides for the Minister of Trade and Industry to prohibit either absolutely or conditionally the use of any mark or word in connection with any trade, business, profession, or occupation or in connection with the trademark or trade description applied to goods, other than the use thereof by SARC members or any other party in accordance with the “The labeling of ROOIBOS and the Rules of Use of ROOIBOS”, published as an annexure to Notice 911 of 2013. The unauthorized use thereof amounts to a criminal offense. The terms to which this prohibition applies are “rooibos”, “red bush”, “rooibostee”, “rooibos tea”, “rooitee”, “rooibosch”.

After eight years of intensive research and lobbying by the industry in South Africa, rooibos was able to achieve status of a GI, which will ultimately promote further economic growth and competitiveness, especially in the international market. The final push for domestic GI protection came in the form of a reciprocal agreement between South Africa and the European Union (EU), as part of the comprehensive Southern African Development Community Economic Partnership Agreement (SADC EPA). This means that only rooibos tea producers and processors from South Africa will be able to use the term rooibos in relation to products that come from the designated geographical area. It is expected that the move to protecting rooibos as a GI in South Africa will help lay the foundation for the protection of future products with certain qualities or characteristics from a specific geographical area in South Africa. Presently, GI protection for products other than wines and spirits has been secured for rooibos tea, honeybush tea, and Karoo lamb meat.

Business results

The rooibos industry has come a long way since Mr. Ginsberg first convinced farmers to try and cultivate the plant for commercial use. The rooibos industry has grown to be an effective industry able to participate on national and international levels in trade relations, with over 5,000 people employed through the 300 commercial and 110 smallholder farmers. These farmers are extreme productive and output over the last 10 years has varied between 10,000 and 18,000 tons per year, depending on certain variables such as amount of rainfall. Out of that, approximately 5,000 tons are destined for the domestic market, with the remainder exported to more than 30 counties. According to information provided by SARC, Germany, the Netherlands, Japan, the United Kingdom and the USA were the top five importers of rooibos tea in 2016.

Commercial farmers make up approximately 95% of total production. The remaining percentage is produced by local cooperatives run by smallholder farmers. Among those, the Heiveld Cooperative Ltd. (Heiveld) and Wupperthal Cooperative are the two largest, and rooibos is the main source of income for cooperative members. These smaller cooperatives use traditional methods to harvest rooibos from wild plants, but have also started to cultivate the plants through more commercialized efforts. A number of the smallholder and commercial  farmers have sustainable certifications such as Fairtrade, Rainforest Alliance and UTZ, and can therefore demand a premium for their products. On Fairtrade farms specifically, smallholder farmers reinvest the premium into social and business development activities, whereas on commercial farmers, the premium is applied to social development activities of the workers.

Fostering change

For generations, Rooibos has provided a healthy, aromatic tea for people all around the world and an important economic resource for farmers and producers in South Africa.  Increasing awareness of rooibos and its health properties has led to a consistent increase in market demand, and finally, in 2014, rooibos received status as a GI in South Africa.

While Rooibos Limited is the largest processor of rooibos, accounting for the biggest share of both the domestic and international markets, for cooperatives, such as Heiveld and Wupperthal, rooibos is indeed deeply linked to the culture and economic and social well-being of its members. The growth of the rooibos industry has had a lasting and positive effect on these cooperatives. Members have been able to make significant strides in improving their communities through efforts such as building schools and providing support for disadvantaged people.