A dispute is brewing over the right to register the name of an herbal tea as a federal trademark.
The tea, indigenous to South Africa, is commonly known throughout the world as “rooibos” (pronounced “roy-boss”), literally meaning “red bush” in the Afrikaans language, so-called because of the red color to which the plant turns during the fermentation process. Free of tannins and caffeine, it has been touted as a cure for conditions from colic to eczema to insomnia, and its renown has slowly but surely begun to infuse the multibillion-dollar international tea market. The unique plant from which it is produced, Aspalathus linearis, was first cultivated by Khoi-descended people of the Clanwilliam region in the Cape of Good Hope, and was marketed as an herbal tea as early as 1904.
In 1994, Annique Theron, a South Africa-based producer of beauty products and one of the early promoters of the healthful properties of rooibos, registered “Rooibos” as a trademark with the U.S. Patent and Trademark Office under her company’s name, Forever Young, much to the chagrin of Rooibos Ltd., the representative of approximately 70 percent of the rooibos industry in South Africa. Last year, Dallas-based Burke International took an assignment of the trademark. Rooibos products have been imported into the United States for a number of years, but it is only recently that Burke has begun to assert its rights to the name Rooibos, citing plans to prevent all “unauthorized” imports of the product. See Sivuyile Mangxamba, “Storm in a Teapot over US Patent [sic] on Rooibos,” Cape Argus, Aug. 8, 2002, at www.allafrica.com/stories/ 200208080012.html.
This article explores two kinds of legal responses to the assertion of exclusive rights in the Rooibos name and product. One is that of federal trademark law under the Lanham Act. The other response is an international one, under the Agreement on Trade Related Aspects of Intellectual Property (TRIPS) of the World Trade Organization (WTO). While the first response would appear to offer the strongest basis for an outcome in favor of Rooibos Ltd., in ongoing cancellation proceedings before the Trademark Trial and Appeal Board (TTAB), TRIPS may prove to be the better long-term mechanism for ensuring that Rooibos products remain to South Africa what Champagne is to France.
FOREIGN GENERIC TERMS
What status, if any, should the name Rooibos be accorded within the rubric of trademark protection? Trademarks are accorded protection depending on how well they serve as indicators of a product or service’s source and origin, thus enabling consumers to distinguish among similar products in the marketplace. See J. McCarthy, Trademarks and Unfair Competition � 2.2 generally.
At the very lowest rung of the ladder of trademark protection are generic terms, which are so universal in their description of a service or product, that they are regarded as being incapable of becoming trademarks. The word rooibos describes a kind of tea. In South Africa, where the bulk of rooibos tea is consumed, the name is clearly distinguished from the various brand names and logos under which it is marketed and sold. Although Rooibos could not be registered in South Africa because of its generic nature, the name is relatively unknown in the United States, and there was therefore little trouble or fuss in securing a U.S. registration.
Does the approach of trademark law to generic terms extend to foreign-language generic terms as well? The answer appears to be clear. As far back as 1934, courts have held that the use as a trademark of a term that is commonly used as a generic term in a foreign country is prohibited by the doctrine of foreign equivalents. Holland v. C.& A. Import Corp., 8 F. Supp. 259 (D.N.Y. 1934). Hence, courts have withheld trademark protection from words such as “Leche de Magnesia” (“milk of magnesia” in Spanish) (McKesson & Robbins Inc. v. Charles H. Phillips Chemical Co., 53 F.2d 1011 (2nd Cir. 1931)); “Kaba” (“coffee” in Serbian and Ukrainian) (In re Hag A.G., 155 U.S.P.Q. 598 (T.T.A.B. 1967)); and “Ha-lush-ka” (“egg noodles” in Hungarian). Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845 (C.C.P.A. 1961).
The leading treatise on trademark law has defined two competing policies that may bring about different results. McCarthy on Trademarks and Unfair Competition � 12:41. The first policy, expounded by the 2nd U.S. Circuit Court of Appeals, holds that the reason such terms are not protected as trademarks is because consumers may recognize the term as generic, which assumes that there are (or will be) a significant number of consumers in the United States who will understand the term to be generic and not a reference to a particular product. Otokoyama Co. Ltd. v. Wine of Japan Import Inc., 175 F.3d 266 (2nd Cir. 1999).
The second policy is that terms which have been unable to achieve protection in the country of their origin on the basis of their generic nature should not be given the status of trademarks in the United States, regardless of the presence of consumers in the United States who would recognize the term. As the reasoning goes, just as U.S. entities should not be entitled to register generic English terms in foreign-language jurisdictions, so the United States should not permit the registration of foreign-language generic terms within its own borders, as this would hamper trade between countries. See McCarthy, � 12:41.
In 2000, the 5th Circuit specifically embraced this approach in rejecting trademark protection for the word “chupa,” a Spanish slang term for lollipops. Enrique Bernat F. S.A. v. Guadalajara Inc., 210 F.3d 439 (5th Cir. 2000). The court explained that to permit the user of the term “Chupa Chups” to exercise exclusive rights over that term in the United States would impede the ability of lollipops of Spanish origin from being marketed freely in the United States. The likely end result of such reasoning is that a U.S. court is unlikely to recognize and uphold exclusive rights in a term denoting a generic species of product from a foreign country.
In the present matter, it may be argued that the registration of Rooibos would give Burke the right to control the flow of all Rooibos-branded products emanating from South Africa. Since all rooibos products are sold using the name rooibos (as a generic name), this would give Burke a virtual monopoly over the world’s rooibos in the United States, which may be regarded as potentially dangerous to international trade. Virginia Burke Watkins, the owner of Burke, said, “I … have the right to tell retailers that they are in violation of my trademark if they sell rooibos products.” She also said that she was prepared to defend her right to the name in any court of law. See Mangxamba, supra.
GEOGRAPHIC SOURCE
A generic term is usually regarded as incapable of denoting source because of its reference to a species of product, rather than a particular product. However, rooibos conveys a strong indication of a geographic source, in that South Africa is the only country in the world that produces this product. Protection for indicators of geographic source can be found in TRIPS, � 3. Geographic indicators are terms singled out for protection as source indicators that denote the source and quality of a product by virtue of its geographic origin. Common geographic indicators include terms such as “Champagne” and “Chianti” referring to wine products manufactured in the Champagne and Chianti regions of France and Italy, respectively.
Under TRIPS, WTO members must ensure that geographic indicators are neither appropriated for exclusive use by entities in their jurisdiction, nor applied to products originating outside the relevant area. In order for a term to qualify as a geographic indicator under TRIPS, “a given quality, reputation or other characteristic” of the term must be “essentially attributable to its geographic origin.” To apply this to rooibos tea, the quality, characteristics and authenticity of rooibos tea must be inherently tied up with its growth and production in the Cederberg region of South Africa.
Arguably, rooibos may satisfy this test. The combination of the local climate and ecosystem have ensured that, currently, rooibos is not commercially grown in any other part of the world. The only rooibos tea products on the market are therefore from a single geographical source. And despite modernization of farming methods, the process by which rooibos is produced remains largely unchanged from those employed by the original Khoikhoi harvesters. The methods used to produce rooibos are thus indigenous, and could arguably be protected as such.
The provisions of TRIPS could also be evoked to prevent affixing the Rooibos name to products manufactured outside of South Africa, the likelihood of which grows along with the popularity of the tea. While rooibos farming is currently confined to South Africa, it is quite possible that, given modern agricultural methods and the potential for genetic modification, and given the increasing popularity of the product around the world, rooibos could conceivably be grown in other countries, which would undermine the potential status of rooibos as a geographic indicator.
Geographic indicators are generally protected by the PTO as certification marks, which certify that a certain product possesses a particular quality or origin. For example, Stilton and Roquefort are registered as certification marks for cheese. Community of Roquefort v. Santo, 443 F.2d 1196 (T.T.A.B. 1968). However, rooibos must clear two further hurdles before it can be regarded as a geographic indicator and registered as a certification mark. First, the current trademark registration must be canceled, as TRIPS provides that any trademark registered in good faith shall have rights of priority over terms that are claimed as geographic indicators. Sec. 3, Art. 24, 5, TRIPS, supra. Second, the United States would not be obliged to protect a term as a geographic indicator if the term is generic in the United States.
Therefore, for example, the PTO would not recognize chablis as a certification mark because in the United States it is used generically to refer to all white wines. Institut National des Appellations D’Origine v. Vintners Int’l Co. Inc., 958 F.2d 1574, 1580 (Fed. Cir. 1992). At first glance, this requirement appears to be a double-edged sword, for Rooibos Ltd. is trying to convince the TTAB of the generic nature of rooibos precisely so that the trademark registration may be canceled. However, while rooibos is generic for the purposes of trademark registration in the sense that it refers only to tea produced from Aspalathus linearis in South Africa using indigenous methods, it is not used to refer generically to all red-colored herbal teas. In the same way, Roquefort was acceptable to the PTO as a certification mark because it is not used generically to refer to all blue-cheese products.
A REGION AND A QUALITY
In order for Rooibos Ltd. to register the name Rooibos, the PTO must be convinced that the term connotes a reference to a region and a quality, despite the fact that rooibos does not refer to a region, but to a product produced from a plant that currently is grown only in a single geographic region. Arguably however, in much the same way as Roquefort and Stilton cheese are produced in the regions that bear the same name, under an age-old process, so is rooibos tea produced only in a particular region of South Africa based on indigenous methods, and should therefore not be used as the name of any product not produced in the same region, using the same process. The fact that there is no rooibos region should not dispose of this argument, as it would not be entirely unusual for such a name to acquire the status of a geographic indictor.
In June 2002, for example, the European Union decided to designate the term Feta as an indicator of origin. All cheese wishing to call itself Feta cheese must have been produced in Greece, in the prescribed manner. The second prize, in the event that the first approach fails, would be to register the term “South African Rooibos,” which would leave the door open for the eventual production of “foreign” rooibos in another region, which may then also be marketed under the name Rooibos. Clearly, the latter would be a most undesirable result for South African rooibos growers.
SOUTH AFRICAN INITIATIVE
Whether rooibos would qualify as a geographic indicator also depends on whether South Africa has protected the rooibos name as such in South Africa. Just as the European Union’s Feta determination has opened the way for a WTO classification, so must South Africa show that it has put in place measures to ensure that all products called rooibos are made in the Cederberg region, according to prescribed methods. Failure to do so may result in the inability of rooibos producers in South Africa to safeguard the reputation of their unique product as the Greek producers of Feta cheese have done. Also, the certification of rooibos as a geographic indicator may open the door to distilling some benefit for the originators of the indigenous knowledge employed in the tea’s production.
TRIPS holds great promise for ensuring the future survival of rooibos as a geographic indicator, which in turn may be a basis for preventing any future appropriation of the marketing or manufacture of rooibos. TRIPS may also provide some ammunition against the assertion of exclusive rights to the rooibos name, and against the ability to produce and distribute it in a way that may confuse consumers as to its South African source.
While the greatest protection for geographic indicators under TRIPS has been confined to wine and spirit products, the next round of discussions is likely to focus on a much wider class of goods. In June 2002, the European Union introduced proposals to the WTO in which the scope of protection afforded to wine and spirits would be expanded to include agri-food products, such as Jasmine Rice (from Thailand) and Darjeeling tea (from India). These proposals include, through the establishment of a multilateral register, a guarantee of the origin of these products. The storm in a teacup over rooibos may therefore benefit from a larger food fight over the extension of protectionist measures, once reserved for wine and spirits, to less intoxicating beverages such as tea.
Bradley Silver is an associate in the intellectual property practice group in the New York office of Chicago’s Kirkland & Ellis (www.kirkland.com). Before joining the firm, he practiced as an attorney in South Africa.
Stephen Johnson, an intellectual property partner at the firm, and Wend Wendland, a senior legal officer and the head of the traditional creativity and cultural expressions section of the World Intellectual Property Organization, provided assistance in the preparation of this article.
