Four Times Someone Tried to Own the Word Rooibos
The famous fight over the word "rooibos" ran from 1993 to 2005 in a US courtroom. It was not the first attempt to own the name, and it was not the last. Here are the other three, including the one the industry's own founding family gave back on its own.
Most tellings of the rooibos trademark story stop at one fight: a Texas company that held the US trademark on the word "rooibos" from 1994 to 2005 and sent tea shops cease-and-desist letters over it. That fight was real, and it mattered. It was also the third attempt to make the plain Afrikaans name for the red bush into someone's private property, not the first, and a fourth followed it seven years later. Four separate parties, in four different countries, across more than a century, each tried to own a word that already belonged to a plant. Only one gave it back voluntarily.
1909: the first fight happened at home, and rooibos won
The earliest attempt predates the industry's most famous names. On 28 October 1909, the Supreme Court of the Cape Colony heard Heatlie Bros. and Others v. Hartley, reported in the Cape Times Law Reports (volume 19, page 954). The respondent, James Hodgson Hartley, had registered a trade mark for "bush tea" with "Rooibosch" as one of its essential particulars. The appellants, Charles Beeton Heatlie and Sydney Glaeser Heatlie of Heatlie Brothers, together with Krone and Co. Ltd, objected. They had been selling the same tea under the same name, or its close Dutch cousin "Roodebosch" tea, before Hartley ever filed. According to the industry's own documented account of the case, the court's answer settled the matter for South Africa: a name traders had already been using in common could not become one man's exclusive mark. It would be eighty-four years before anyone in South Africa tried again.
The family that built the industry also, briefly, owned the word
Rooibos became a real business a few years before that ruling, through one merchant. Benjamin Ginsberg, a young immigrant from the Russian Empire who had grown up around his own family's tea trade, settled in the Cederberg after the South African War and began buying tea from local harvesters around 1903 and 1904. In 1912 he moved into Clanwilliam itself and opened a shop there, encouraged farmers to gather and process rooibos at scale, and in time launched Eleven o'Clock, the oldest rooibos brand still sold today, its clock-face mark drawn, the family later recalled, from Ginsberg's own pocket watch stopped at eleven sharp.
When Ginsberg died in the 1940s, his son Charles took the business over, added drying courts and machinery, supplied seed to hundreds of farmers, and pushed Eleven o'Clock's name abroad, including into cinema advertising. It was Charles, known in the trade as Chas, who did something none of the later claimants managed. In the late 1940s he registered the words "rooibos" and "rooibosch" themselves as trade marks in the United Kingdom, reasoning that the investment it would take to build a British market deserved protection from competitors who had put in none of the work. For a stretch of the 1950s through the 1970s, the family that had built the industry held the literal, generic word as private British legal property, the exact thing a Texas trademark holder would later be accused of decades on.
Then Ginsberg gave it back. According to the documented company history, he judged that keeping exclusive rights to a whole industry's name was not something one firm should hold, and returned the marks so the wider trade could use them freely. He did not lose a lawsuit over it, and no treaty forced his hand. He simply concluded the word belonged to the plant and the people who grew it, not to Eleven o'Clock, and let go of what he legally owned.
The one everyone has actually heard of
The fight most readers know came next. The Ministry has told the full story elsewhere; the short version is this. In 1993 the South African skincare entrepreneur Annique Theron registered "Rooibos" as a US trademark for cosmetics, and it was granted in 1994. In 2001 she sold it for ten US dollars to Virginia Burke-Watkins of a Dallas company, Burke International, which began sending cease-and-desist letters to American tea cafes and resellers over the plain word on their own labels. The case reached a federal courtroom, a judge ruled the mark invalid in January 2005, and Burke International surrendered the US registration that June, after roughly a decade and close to a million dollars in combined legal fees. Unlike the Ginsberg case, this one ended only because a court made it end.
Paris tried too, with four days to answer
The fourth attempt came from France. In 2012 a Paris company, Compagnie de Trucy, filed a dozen trademark applications built around the word "rooibos," including "South African Rooibos" and, pointedly, "Eleven o'Clock Rooibos," the very brand name Charles Ginsberg had spent decades building. South Africa's Department of Trade and Industry and the South African Rooibos Council objected, racing to find a French-language translator since a challenge had to be filed in French, and getting as little as four days' notice to respond under French procedure. Compagnie de Trucy ultimately agreed not to pursue exclusive rights to the mark, and the episode became one more argument for the standing legal shield South Africa built soon after: a domestic geographical indication in 2013 and 2014, then a European Union protected designation of origin in 2021, both of which now make this kind of filing far harder to attempt at all.
What actually made the difference
Set the four side by side and the pattern is plainer than any single story tells alone. Two were stopped in court, in 1909 and in 2005. One was talked down under diplomatic pressure and a four-day deadline, in 2012. Only one, the Ginsberg family's own UK mark, ended because the person holding it chose to give it up. Everything that protects the word today, South Africa's 2013 domestic rules and the 2021 EU designation among them, was built because a private handshake could not be counted on to happen again. The fight over this one plain word has now run at least four times, across four separate legal systems, in more than a century.
Sources
- Klipopmekaar, "Rooibos: A Trademark To Protect" (extract of Boris Gorelik's "The Rooibos Story," South African Rooibos Council). https://www.klipopmekaar.co.za/rooibos-a-trademark-to-protect/
- Klipopmekaar, "The History of Rooibos Tea." https://www.klipopmekaar.co.za/rooibos-tea-history/
- South African Rooibos Council, "Rooibos History." https://sarooibos.co.za/rooibos-history/
- Jordan Moshe, "Rooibos tea's Jewish roots run deep," SA Jewish Report. https://www.sajr.co.za/rooibos-teas-jewish-roots-run-deep/
- World IP Review, "South Africa attempts to stall French 'Rooibos' trademark bid." https://worldipreview.com/news/south-africa-attempts-to-stall-french-rooibos-trademark-bid
- "The Plights of African Resources Patenting Through the Lenses of the World Trade Organisation: An Assessment of South Africa's Rooibos Tea's Labyrinth Journey," PMC. https://pmc.ncbi.nlm.nih.gov/articles/PMC4202516/
- World Intellectual Property Organization, "Disputing a Name, Developing a Geographical Indication." https://www.wipo.int/en/web/ip-advantage/w/stories/disputing-a-name-developing-a-geographical-indication