Presentation prepared by Mark Opanasiuk for the class "Intellectual Property in Food and Agriculture" in LL.M. program in Agricultural and Food Law, University of Arkansas School of Law.

1. NAME & GEOGRAPHIC INDICATION
Legal fights for IP rights

2. Rooibos (“red bush”) is growing only in a small area in the Cedarburg mountain
range of the state of Western Cape in South Africa in unique geographic location on
high altitudes (200 -1000 meters) in arid conditions.

3. ROOIBOS “THEN” AND “NOW”
➤ For hundreds years Rooibos was used
by Khoi and San tribes as a herbal tea
and was unknown for the world.
➤ High in antioxidants and caffeine-free,
rooibos can relieve allergic symptoms,
provide an energy boost and help heal
damaged skin.
➤ On average, about 12 000 metric tonnes
of Rooibos are produced in South Africa
per year. South Africans consume 4 500
to 5 000 tonnes and the rest exported.
➤ Rooibos is exported to more than 30
countries across the globe. Germany,
The Netherlands, Japan, the United
Kingdom and the United States of
America are the biggest importers of
Rooibos.

4. HISTORY OF ROOIBOS PROTECTION IN SA
➤ In 1948, in South Africa (SA) rooibos producers and famers organized and formed the
Clanwilliam Tea Cooperative;
➤ In 1954, the SA Ministry of Agriculture, established the Rooibos Tea Control Board;
➤ In 1993 the Tea Board privatized and became Rooibos Limited - one of eight
producers of rooibos tea in SA;
➤ In April 2005, Rooibos Limited and other rooibos companies in SA formed the South
African Rooibos Council (SARC);
➤ In 2008, SA Ministry of Trade and Industry submitted the Intellectual Property Laws
Amendment Bill to parliament to develop a framework for GIs in South Africa;
➤ The SA Ministry of Trade and Industry issued final rules on 6 September 2013 that
protects and restricts the use of the names "rooibos", "red bush", "rooibostee", "rooibos
tea", "rooitee" and "rooibosch" in that country, so that the name cannot be used for
things not derived from the Aspalathus linearis plant. It also provides guidance and
restrictions for how products which include Rooibos, and in what measures, should
use the name "rooibos" in their branding.

5. IP BATTLE FOR “ROOIBOS” WORD IN THE USA
➤ In 1994 Forever Young (skincare products) registered TM in the United States Patent and
Trademark Office for word “Rooibos”;
➤ Rooibos Limited (RL) with the help of the SA government objected to Forever Young’s registration
(rooibos - generic term - red bush);
➤ In 1995 RL tried to register TM for a stylized logo of a steaming cup with the word “Rooibos”
outlined. The application was suspended and the trademark was approved and registered in
December 2006.
➤ In 2001 - TM “Rooibos” was sold to american company - Burke International (BI). BI started
sending “cease and desist” letters to a number of small tea cafés and Internet resellers;
➤ In 2002 RL tried to register at USPTO TM for words “Rooibos the Red Tea” - was challenged by
BI;
➤ In 2005 (after 10 years and $1 million legal fees) BI and RL reached a settlement: both companies
cancelled their TMs on the exclusive right to the word “rooibos” in the USA and other countries;
➤ Companies now are registering TMs containing the word “rooibos”, where 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.

6. ROOIBOS IN EUROPE
➤ In 2005, RL registered a TM for its stylized logo with the EU
Office for Harmonization in the Internal Market (OHIM);
➤ In 2007, RL registered a TM with the Benelux Office for
Intellectual Property (BOIP) for “Cape Rooibos Nectar of
Nature the Uniquely South African tea from the beautiful
Cape”;
➤ In 2013, SARC had to swiftly prevent French company
Compagnie de Trucy from trying to trademark the Rooibos
name in France;
➤ Rooibos tea has been granted geographical indication (GI)
status in the EU in 2014.

7. WHY ROOIBOS SHOULD BE GEOGRAPHIC INDICATION?
➤ it protects the name from usurpation and allows export without fear
of litigation in foreign markets;
➤ GI comes with specific guidelines for how a product should be
produced to ensure the same high quality;
➤ GI adds value for the producers, and a GI would put more power in
the hands of the producers and farmers;
➤ GI links an area to a product, it would be a powerful marketing tool
for the region;
➤ rooibos is produced in a fragile ecosystem, and a GI will help protect
the unique biodiversity of the region;
➤ GI will ensure that rooibos tea blends are in fact genuine and not
diluted.

8. “Thank you for attention!
Mark Opanasiuk