Disputing a Name, Developing a Geographical Indication

Overview

Name:	Rooibos	Object of Protection:	Distinctive Signs / Commercial Names, Goods with Specific Geographical Origin, Traditional Knowledge
Organization Type:	Commercial Enterprise, Co-operative	Instrument of Protection:	Geographical Indications and Appellations of Origin, Trademarks
Industry:	Food Products	Focus:	Commercialization, IP Dispute Resolution
Country/Territory:	South Africa

The Cedarburg region in Western Cape, South Africa (Photo: Martin Heigan)

Background

Deep in the mountains of Cedarburg, some two hundred kilometers north of Cape Town in the Republic of South Africa (South Africa), red 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 aspalathuslinearisbut called “rooibos” by the locals (which literally means “red bush” and is pronounced “roy-boss”), the plant has been used by indigenous people – notably the Khoi and San – for generations as a remedy to a wide range of ailments. The Khoi and San discovered that the fine, needle-like rooibos leaves made a healthy, tasty and aromatic herbal tea. High in antioxidants and caffeine-free, rooibos can relieve allergic symptoms, provide an energy boost and help heal damaged skin.

Goods with Specific Geographical Origin

Rooibos is one of more than two hundred species of aspalathus that only grow in South Africa, but it is the only one with recognized health benefits. Only growing in a small area in the Cedarburg mountain range of the state of Western Cape, rooibos requires specific geographical conditions to grow. The region experiences hot, dry summers and cooler, wetter winters, though the region is predominantly arid. 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. With one of the most diverse vegetation populations in the world its nickname of the Cape Floral Kingdom is well deserved. This floral diversity has played a pivotal role in generating the ideal soil conditions for rooibos.

Endemic to the region, 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 Cedarburg mountain range. Roots of the plant extend two meters or more below the surface to reach water, which helps the plant survive in the region’s generally arid conditions. The long root system also aids in soil water replenishment, which helps more rooibos plants and other species grow in the region. 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. Rooibos plays an important geological role in the region as it is a pioneer species in the post-fire environment, which means that it grows quickly and helps to revitalize the area after natural fires or fires set by farmers to burn fields. Although climatic conditions vary, rooibos thrives in soil that undergoes a regular occurrence of fire, and the plant is also well suited to grow on the many slopes of the region.

The specific conditions of the Cedarburg region provide rooibos with its many unique features. Shrub-like in nature, rooibos has a central, smooth main stem that subdivides into a number of strong offshoots near the soil surface. These offshoots are connected to delicate branches that each bears 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. Rooibos is covered with small, yellow pea-shaped flowers during the spring, which each produce a small legume containing a single small, light yellow, hard-shelled seed. One kilogram of seed can yield approximately eight hectares of rooibos plants.

Farmers in the region use their traditional knowledge to process Rooibos into tea (Photo: Paul Miller)

Traditional Knowledge

The Khoi and San people were the original harvesters and consumers of rooibos, and the traditional knowledge that they have gained throughout the centuries is still used in modern cultivation. Although rooibos is not a “real” tea plant, it is harvested and processed in a similar fashion. After spending hours walking through the Cedarburg fields to find optimal plants, the Khoi and San people would harvest them and then chop them into small pieces with axes. After crushing them with hammers, the plants would be fermented in heaps and then finally dried in the sun. Oxidation occurs naturally through this process, which turns rooibos leaves from green to red and gives the tea its distinctive color.

Harvesting and processing wild rooibos is a time consuming and difficult task, and for centuries the health benefits of rooibos were only enjoyed by the Khoi and San people. Farming and rooibos production was small-scale, 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 the Khoi introduced the refreshing tea to Swedish botanist Carl Humberg. Although he took some to Europe and wrote about it, the real potential for the plant was not recognized until 1904, when Benjamin Ginsberg, a Russian immigrant to South Africa, became interested in rooibos tea. Mr. Ginsberg – descended 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, calling it “Mountain Tea”.

Real commercialization of rooibos tea did not materialize until Mr. Ginsberg encouraged a local doctor to experiment with propagation (the process of creating new plants from a variety of sources), which yielded promising results. Mr. Ginsberg took these results to local rooibos 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 build up 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 have access to greater infrastructure and to reach more consumers, Mr. Ginsberg eventually supplied the tea to large national and international tea conglomerates, which would package and sell rooibos tea under their own brands.

A glass of Rooibos tea (Photo: Jorge Rimblas)

In 1948, rooibos producers and famers organized and formed the Clanwilliam Tea Cooperative (the Tea Cooperative). A defining moment came in the industry in 1954, when the South African Minister of Agriculture, at the request of the Tea Cooperative, established the Rooibos Tea Control Board (the Tea Board). Tasked with revitalizing the rooibos industry after its collapse following World War II, the Tea Boardput significant investment into 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 Tea Board the industry started to move back on track.

In 1993 the Tea Board privatized and became Rooibos Limited, a company that became one of eight producers of rooibos tea in South Africa and is by far the largest and most established. In April 2005, Rooibos Limited and other rooibos producers, processors, manufacturers, marketers and exporters formed the South African Rooibos Council (SARC) as a non-profit organization to promote the interests of the South African rooibos industry locally and internationally. Through their collective energy, SARC members have been able to engage and cooperate with key external interest groups (such as regional and national governments and conservation agencies, among others) for the benefit of the industry. Research and development (R&D), food safety and certification also play important roles in the activities of SARC.

The rooibos industry has become very streamlined and modern, and by 2011 there were over 400 farmers producing rooibos tea for Rooibos Limited and other companies. These farmers are extremely productive, and have successfully combined traditional knowledge with modern equipment to output over 12,000 tons of rooibos tea every year. Out of that, approximately 5,000 tons is for the domestic market, with the remainder exported to over thirty countries. Denmark, Germany, Japan, the United Kingdom and the United States of America (USA) are the largest importers of rooibos tea. This lively and growing industry provides jobs for over 5,000 people and brings in approximately R500 million (approximately US $70 million) in annual earnings.

Large plantations managed by companies such as Rooibos Limited make up approximately 95% of total production. The remaining percentage is produced by local cooperatives run by generally resource poor 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 do not cultivate rooibos, but use their traditional knowledge to harvest it from wild plants and process it the same way in which their ancestors did. Rooibos products from these cooperatives are Fair Trade certified and therefore command a premium over similar products from the larger producers.A portion of the premium is typically reinvested in developing business opportunities and running training programs for cooperative members.

IP Dispute Resolution

Despite the booming tea industry, rooibos has many other applications, one of the most popular of which is used in cosmetics and skin care. This started in 1968, when Mrs. AnniqueTheron, a South African mother struggling with an infant suffering from colic, decided to give rooibos a try. Mrs. 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 the symptoms from 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.

Mrs. Theron’s book led to a lot of publicity for rooibos and renewed interest in the plant and how it could be used in cosmetics and medicines. Mrs. Theron 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 brought 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” for use with skincare products with the United States Patent and Trademark Office (USPTO) in 1993 and it was registered in 1994. When Rooibos Limited heard of this, the company was upset because even though it was the largest producer and exporter of rooibos – and represented many poor farmers – such a trademark would limit its exporting capabilities to the USA, because it would be unable to market its tea as rooibos tea. With the help of the South African and West Cape governments, the company objected to Forever Young’s registration, arguing that it was not valid because rooibos is a generic term in Afrikaans that simply means “red bush” and therefore cannot be protected with a trademark.

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

The dispute raged on and did not garner much attention until after Mrs. Theron retired in 2001. When she did, she also 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, and 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 intellectual property (IP) legal battles were being waged, the small Wupperthal cooperative, which represents poor rooibos farmers, got involved and the media took notice. Cooperative farmers were having a hard time 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 name “rooibos” to only those companies that were prepared to enter into a business relationship with Ms. Burke-Watkins. Without their best interests in mind, such a relationship would be extremely detrimental for the resource poor farmers of Wupperthal that depended on the sales of their harvests to feed their families. 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.

In order to market its products in the USA, in 2002 Rooibos Limited filed a trademark application with the USPTO for Rooibos the Red Tea. However, because the trademark included the word “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. After ten years and nearly US $1 million in legal fees, in 2005 the two companies reached a settlement. Both companies voluntarily and unconditionally agreed to cancel their trademark registrations and applications 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.

Trademarks

Rooibos Limited’s trademark (BIPO Registration No. 0578494)

With the dispute settled, companies such as Rooibos Limited were free to market their products in the USA and other countries with names containing the word “rooibos”. Well aware of the importance of the IP system and the benefits it can bring when used correctly, a number of companies have registered trademarks for rooibos products names in major markets such as the USA. While these trademark registrations contain the word “rooibos”, the word is used in conjunction with other stylized words, symbols or designs, and as such they do not lay claim to the word itself. Rooibos Limited applied for a trademark registration with the USPTO in 1995 for a stylized logo of a steaming cup with the word “Rooibos” outlined. The application was suspended while the company was involved in litigation, but after the settlement the trademark was approved and registered in December 2006.

All registered trademark applications make no claim to the exclusive right to the word “rooibos”. Since Burke International is an authorized reseller of Annique products in the USA, Ms. Burke-Watkins owns trademark registrations with the USPTO for a logo relating to rooibos, which was first registered in November 2006 and then updated through a new application in April 2007.

Much emphasis has been placed on the USA when talking about rooibos and trademarks due to the IP dispute in that country, but many companies have also made trademark registrations in other countries. Rooibos Limited registered a trademark in August 2007 with the Benelux Office for Intellectual Property (BOIP) for “Cape Rooibos Nectar of Nature the Uniquely South African tea from the beautiful Cape”. The registration was renewed in August 2007. In 2005, the company registered a trademark with the Office for Harmonization in the Internal Market (OHIM) for its stylized logo.

Geographical Indication

In 2008, South Africa’s Minister of Trade and Industry recognized the importance of geographical indications (GI) and submitted the Intellectual Property Laws Amendment Billto parliament. If approved, this bill would develop a framework for GIs in South Africa. The protection of Rooibos was one of the main reasons for the proposal of the bill, and as of early 2011 it was still being considered by the South African parliament.

Indeed, rooibos meets all of the requirements for geographical indication protection: it is only grown in one part of the world; the properties of the plant are a direct result of the unique geographical conditions in which it grows; there is a strong link between rooibos and the farmers that grow it, as they have traditional knowledge on the correct way to cultivate and produce the plant; and the plant is truly part of South African identity.

Entities such as Rooibos Limited and SARC are championing the proposed GI for a number of reasons. First, it protects the name from usurpation 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. Second, 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. Third, it adds value for the producers, and a GI would put more power in the hands of the producers and farmers. Fourth, 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. Fifth, rooibos is produced in a fragile ecosystem, and a GI will help protect the unique biodiversity of the region. Lastly, a GI will ensure that rooibos tea blends are in fact genuine and not diluted, by requiring the product to contain at least 80% rooibos in order for it be labeled as an official rooibos product.

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. It has since turned into a thriving and prosperous industry, providing jobs for thousands and putting a sparsely populated region at the forefront of the international tea industry. Demand for rooibos has steadily increased, and tripled for the ten year period between 1997 and 2007, going from an annual production of 5,000 metric tons to 15,000 metric tons. By 2008, production was over 18,000 metric tons. The cultivation area has also doubled in that time frame, and by 2008 was over 40,000 hectares. By early 2011, the rooibos industry was enjoying an average annual growth rate of approximately six percent.

In early 2011, Rooibos Limited remained the largest producer and exporter of rooibos, accounting for ninety percent of the market. The company had nearly eighty percent of the international market, which it believes is due to the increasing awareness of rooibos and its healthy properties. For cooperatives such as Heiveld and Wupperthal, rooibos is indelibly 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.

Fostering Change

Although long and costly, the IP dispute surrounding rooibos actually brought attention to the unique properties of the plant, its importance to South Africa and its link to the culture of the people in the Cedarburg region. Rooibos has thus been cited as a prime candidate for GI protection, and is at the forefront of the possible introduction of a GI system in South Africa.

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. With its importance reverberating throughout the tea and IP world, it is poised to bring about change that will positively benefit a people, a legal system, and a nation.