South African company seeks cancellation of ROOIBOS mark

South African company Rooibos Limited has initiated proceedings in the United States against Burke International calling for the cancellation of its ROOIBOS registration on the grounds that it is inherently descriptive and generic as it is the name of a plant indigenous to South Africa.

The name Rooibos, which is Afrikaans for red bush, stems from the plant's foliage colour in winter and the characteristic red colour its leaves obtain after fermentation. Its leaves are used for herbal teas and extracts are used as ingredients in health and beauty products. Until fairly recently, it only grew in the Cedarberg area in the Western Cape.

Following the registration of the trademark ROOIBOS in the United States by Burke International for herbal tea and skin care products, Rooibos Limited brought an action for cancellation before the US Patent and Trademark Office (USPTO). It contends that Rooibos is a generic name belonging to South Africa.

From a South African perspective, it seems clear that the mark is generic. Rooibos is the general name for a plant and therefore should not be used to denote a single source for goods made up of extracts from that plant. A large number of entities around the world manufacture or sell products containing extracts from the Rooibos plant and the name is reasonably required by these entities in the normal course of trade.

It remains to be seen, however, whether the USPTO will agree with these arguments.

Herman Blignaut, Spoor & Fisher, Pretoria