SA fights for Rooibos trademark
26 May 2004
Since 2001, unlisted public company Rooibos Limited has been involved in a US patent and trademark court case which could have major implications for South African trademark rights.
The case relates to a long-running trademark dispute over the use of the name "Rooibos" in the United States.
Rooibos is grown only in the Cedarberg area in the Western Cape, about 200 kilometres north of Cape Town. There is no alternative source of supply anywhere in the world.
Clanwilliam-based Rooibos Limited is the largest processor and marketer of Rooibos tea, a naturally caffeine-free herbal tea high in antioxidants.
According to Rooibos Limited managing director Martin Bergh, the company has already spent over R1.5-million fighting an American woman, Virginia Burke-Watkins, over the use of the name Rooibos.
According to Bergh, South African entrepreneur Annique Theron originally registered the Rooibos trademark in the US in 1994. In 2001,
Theron sold the trademark to her American agent, Burke-Watkins, for $10.
Since then, Rooibos Limited, with help from the South African and Western Cape governments, has been trying to wrest the name from Burke-Watkins, contending that Rooibos is a generic name belonging to South Africa. Rooibos Limited's case is still with the US Patent and Trademark Office.
Meanwhile, Burke-Watkins' firm, Dallas-based Burke International, has begun litigation of its own.
According to Proudly South African, Burke International has been suing small US tea cafes and internet traders for the use of the name "Rooibos" after sending them "cease and desist" letters and demanding $5 000 (R33 500) from each.
Many US rooibos tea distributors have decided to defend themselves, and a number cases in US federal courts have started. Proudly South African believes these could help South Africa's cause.
One of Rooibos Limited's
clients, Californian distributor Seelect, sued Burke International in the federal court, applying to have Burke-Watkins's trademark expunged and claiming damages from her company.
However, the court ruled that it did not have jurisdiction over the matter because Burke International did not trade in California.
Neutraceuticals in Utah, Republic of Tea in Missouri, and the American Herbal Traders Association have also sued for expungement of the trademark.
According to Bergh, Rooibos Limited might ask for its case with the US Patent and Trademark Office to be referred to a federal court. "We would probably sue [Burke-Watkins] in Dallas where she has her business", Bergh told Proudly South African.
Macdonald Netshitenshe, director of commercial law and policy in South Africa's Department of Trade and Industry (DTI), said the DTI had pledged R2-million, and the Western Cape provincial government had pledged R250 000, to assist Rooibos Limited in its US
litigation.
South Africa's Rooibos tea industry is worth an estimated R180-million in annual turnover, based on exports of about 6 000 tons at R20 a kilogram, and local sales of about 4 000 tons at R15 a kilogram.
"But the South African retail value was estimated to be R280-million, and on the international market the value couldn't even be calculated", Bergh said.
Bergh's attorney of record, Jan Stander of Pretoria-based specialist trademark and patent firm Adams and Adams, said they had filed evidence to show that the word "Rooibos" is descriptive or generic and can't be monopolised.
"We have lots of evidence, even from American literature dating back to the 1930s, showing the word 'Rooibos' used as a descriptive term", Stander said.
Source: Proudly South African
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