Much emotional South African indignation has arisen in recent days with news that an American firm has 'hijacked' the US trademark rights to 'rooibos', the indigenous herbal tea that's growing rapidly in popularity and renown worldwide.

An American company, Burke International, which has acquired the trademark for the word 'rooibos' in the US, claims it has exclusive rights to use it, and has threatened to block exports by other companies who are starting to make headway in the US market.

The rooibos industry, based in the Western Cape, the only region in the world where it's grown, says rooibos (meaning 'red bush' in Afrikaans) is a generic name for an indigenous and unique medicinal plant (Aspalanthus linearis). It also argues that the name is a national asset that could by law not be registered by an individual or company.

However, a video conference this week between the US Patent and Trademark Office (USPTO) in Washington and media representatives, organised by the US consulates in Cape Town and Johannesburg, helped put the issue into perspective.

A well-informed Eleanor Meltzer, an attorney with the USPTO, emphasised that this was not a US versus SA trade issue (South African producers being rather sensitive about such things after the much-protracted trade deal with the EU that will outlaw their use of the generic names 'sherry', 'port' 'ouzo' and 'grappa'), but one which involved litigation between two parties and rights of appeal in US courts.

It turns out that the issue is not even new. . . . the 'rooibos' trademark was registered by a South African cosmetic company, Annique, back in 1994, with no initial opposition. In 1996, however, the rooibos industry, led by SA Rooibos Limited, an umbrella organisation of rooibos tea producers, instituted cancellation proceedings and these are ongoing.

In 2001, the trademark was transferred to Dallas-based Burke International, distributors in the US for Annique, which has only now reportedly started insisting that the export of the tea and its by-products under the name rooibos is in direct conflict with its trademark.

Meltzer emphasised that trademarks are territorial and that the USPTO does take into account whether foreign terms have meaning, and if they are in the public domain, before finalising their registration. She believes the reason that the rooibos trademark 'slipped through' these checks was due to a lack of information back in the early 1990s about South Africa generally, and a product that was virtually unknown outside of its borders.

While not commenting directly on this case, she added that if a name is found to be generic or in the public domain, it is always a basis for cancellation of a trademark, no matter how long it has been registered. Meltzer said there was no US ban on rooibos and that it was up to trademark owners to police their marks.

By all accounts, it would seem that Rooibos Limited has a strong case and that its petition to cancel should be successful when finally resolved.

About Rooibos:

South Africa's indigenous Khoi Khoi and San people discovered and began using the caffeine-free rooibos hundreds of years ago. It's also low in tannin and rich in anti-oxidants, and is used in both beverage and pharmaceutical form to treat colic, stomach cramps and constipation, relieve insomnia, heal skin diseases and promote healthy skin.

In recent years it has become as popular as South African wines on the international market. Of South African tea exports to the US amounting to 160 million rand (US$16m), rooibos alone is worth three quarters of that.

About 40% of rooibos is exported to Germany, which together with Japan is its fastest growing foreign market.

This brouhaha also comes shortly before the UN World Summit on Sustainable Development in Johannesburg where debate on the ownership of indigenous species is due to take place.

By Brenda Neall, editor of SA Food Review