Who Gets to Call It Rooibos? The Fight to Protect a Plant's Own Name
A Texan company spent four years demanding money from anyone who used the word "rooibos" to sell tea, until a US court struck its trademark down. Here is how South Africa lost the name, won it back, and built three separate legal shields so it could never happen again.
For eleven years, the plain Afrikaans name for the red bush was a registered US trademark, a piece of private property somebody could enforce. For the last four of those years a Dallas company owned it and did exactly that, demanding money from South African exporters, small American tea cafes, and online resellers who wanted only to say what was in the cup. That is where every legal shield rooibos now carries begins. The country lost control of its own tea's name, and set out to make sure it could not happen again.
How a plant's name became private property
The trademark began, oddly, with skincare. In 1993 Annique Theron, the South African founder of the Forever Young cosmetics line, filed to register "Rooibos" with the United States Patent and Trademark Office, and the mark was granted in 1994. Theron had built her reputation decades earlier on rooibos itself; she was the figure behind the 1968 claim that put the tea on the health-food map in the first place. The skincare trademark sat quietly until 2001, when Theron retired and sold it for ten US dollars to Virginia Burke-Watkins of a Dallas company, Burke International.
Burke-Watkins did not let it sit quietly. According to the World Intellectual Property Organization's own account of the case, Burke International began sending cease-and-desist letters to small tea cafes and online resellers across the United States, demanding roughly five thousand dollars from anyone using the word "rooibos" to describe, simply, rooibos. Companies that wanted to keep selling the tea under its own name were told to enter a business relationship with Burke International instead.
The argument that ended it: you cannot own a plant's name
South African growers had a straightforward objection. Rooibos Limited, a South African exporter, petitioned the US Patent and Trademark Office in August 2004 to cancel the registration, arguing the mark was, in the company's own words to the World Trademark Review, "inherently descriptive and generic as it is the name of a plant indigenous to South Africa." The American Herbal Products Association, the trade group for the US herbal-products industry whose members import and sell rooibos, joined the cancellation effort on the same principle: a generic plant name belongs to no one.
The dispute also went to court. The Republic of Tea, a US seller of rooibos-based blends, sued Burke International directly, and in January 2005 a Missouri federal district court ruled the trademark invalid, finding that selling the tea under its own common name did not infringe the mark at all. Burke International surrendered the US registration that June. The fight had run roughly ten years and cost the parties close to a million US dollars in combined legal fees, by WIPO's accounting, to settle a question that sounds, on its face, simple: what do you call a plant that already has a name.
Why "it's generic" was not a permanent fix
Winning the cancellation fixed the immediate problem but not the underlying one. A generic name that nobody owns is also a name anybody can attach to anything, including tea grown nowhere near the Cederberg. South Africa's industry and government drew the lesson that the country needed a standing legal shield for the name, not just a successful defense after the fact. That architecture, built quietly in the years after the trademark fight, is what protects the name today.
South Africa built its own shield first, years before Europe
South Africa's answer came in 2013, and it did not use a modern geographical-indication registry. It reached for a consumer-protection statute from 1941. Under the Merchandise Marks Act, the trade minister may prohibit the use of a word in commerce except on stated terms, and in September 2013 the government published official Rules of Use for the word "rooibos." From that point the name could be applied only to a product that is one hundred percent Aspalathus linearis, grown or wild-harvested in a defined stretch of the Western and Northern Cape. The notice gave the South African Rooibos Council a legal basis to police who may sell tea as "rooibos" at home, and it is the step that let South Africa go on to apply for the same protection in Europe.
South Africa did also pass a law built for exactly this, in the same year. The Intellectual Property Laws Amendment Act 28 of 2013 amended the Trade Marks Act to allow the registration of geographical indications and indigenous terms. It was signed in December 2013 and then never brought into operation, still awaiting a presidential proclamation that has not come; as late as 2016, rooibos growers were reported to be pressing for formal GI certification. So in 2013 it was the old labelling law, not the new registry, that actually shielded the name.
Then the European Union followed, in 2021
Rooibos's international profile rose further on 31 May 2021, when the European Union entered "Rooibos" in its register of protected designations of origin, the first African food to receive the status, under Commission Implementing Regulation (EU) 2021/865. The EU mark restricts the name itself: only leaf grown and processed within a defined zone of the Western and Northern Cape, set out in the registration's specification as sixteen local municipalities, may be sold in the European Union as "rooibos." A similar bush grown anywhere else cannot borrow the name, however close the resemblance. Dr Ivan Meyer, the Western Cape's agriculture minister at the time, called it a signal of "unique quality to consumers, not only in Europe but all over the world."
The UK mark followed its own path after Brexit. Rather than lapsing, rooibos's protection carried over intact: the bush's inclusion in the geographical-indication protocol of the trade agreement between the Southern African Customs Union and the EU meant a separate transition agreement between the UK and that customs union preserved the same protection in Britain, the South African Rooibos Council has confirmed, a reciprocal arrangement under which UK-origin names such as Stilton stay protected in South Africa in turn.
What the protection actually does, and does not, restrict
A geographical indication is a narrow tool: it says nothing about brand or recipe, only about who may use the word "rooibos" to sell tea. Anyone, anywhere, may try to grow Aspalathus linearis in another climate. What they cannot do, in the markets where the protection applies, is call the result "rooibos" unless it was grown and processed in the registered Cape region. The plant is endemic to that corner of South Africa in practice, since it has never been commercially established to scale elsewhere, so the rule mostly formalizes a geography that already existed rather than inventing a new one.
The protection also says nothing about quality, ethics, or how the people who grow it are paid. Those are separate questions, governed by separate frameworks: South Africa's 2019 benefit-sharing agreement with Khoi and San communities addresses who is owed for the traditional knowledge behind the plant, a different legal track entirely from the name protection covered here. A bag can carry a fully protected geographical indication and still say nothing about whether the harvest behind it was fairly paid.
The shape of it, end to end
Three separate layers now stand behind one word, built in this order. A US court struck down the private trademark in 2005. South Africa shielded the name at home in 2013, under a 1941 labelling law, eight years before Europe acted. The European Union added its own protection in 2021, and the United Kingdom kept that after Brexit through a carried-over trade agreement rather than a fresh registration. Each closes a different door, and none of them changes the leaf in the cup. What they settle is the older, smaller question the whole fight kept returning to: who is allowed to say the word.
Sources
- 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
- just-food, "South Africa sees red over US-held trademark for rooibos tea." https://www.just-food.com/news/south-africa-south-africa-sees-red-over-us-held-trademark-for-rooibos-tea/
- World Trademark Review, "South African company seeks cancellation of ROOIBOS mark." https://www.worldtrademarkreview.com/article/south-african-company-seeks-cancellation-of-rooibos-mark
- WIPO Lex, "Intellectual Property Laws Amendment Act, 2013 (Act No. 28 of 2013), South Africa." https://www.wipo.int/wipolex/en/legislation/details/13714
- goLegal, "Rooibos: Soothing the storm in a teacup." https://www.golegal.co.za/rooibos-trade-mark/
- Intellectual Property Watch, "Local Rooibos Tea Growers Take Charge In Effort To Gain GI Protection." https://www.ip-watch.org/2016/01/12/local-rooibos-tea-growers-take-charge-in-effort-to-gain-gi-protection/
- SAnews, "South African Rooibos makes list of EU's protected designations." https://www.sanews.gov.za/south-africa/south-african-rooibos-makes-list-eus-protected-designations
- European Commission, eAmbrosia register / Commission Implementing Regulation (EU) 2021/865. https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32021R0865
- South African Rooibos Council, "Rooibos Continues to Enjoy GI Protection in UK Post-Brexit." https://sarooibos.co.za/rooibos-continues-to-enjoy-gi-protection-in-uk-post-brexit/
- Nutraceuticals World, "Rooibos Trademark Abandoned." https://www.nutraceuticalsworld.com/breaking-news/rooibos-trademark-abandoned/