Rooibos was likely to be deregistered as a trademark in the US, if past precedent was anything to go by.
US Patent and Trademark Office (USPTO) attorney Eleanor Meltzer on Thursday told journalists in Johannesburg and Cape Town by videophone from Washington that words found to be generic or in the public domain at the time of registration could not remain trademarks.
Rooibos was registered in the US in 1994 by Annique Theron, the producer of Annique beauty products.
She applied for the trademark in 1993 under her company’s name Forever Young, and entered into a licence agreement with Burke International.
The trademark was transferred to Burke year. Rooibos Ltd, representing the rooibos tea producers from Western Cape, is now embroiled in a legal dispute with Burke.
The South African Department of Trade and Industry has thrown its weight behind the fight to have the rooibos name deregistered in the US.
The department said on Friday it ”regarded the restriction of the trademark rooibos in a very serious light” since it was a generic name for an indigenous herbal plant.
Meltzer said she could not comment on the specifics of the Rooibos case as it was sub judice, but several other common terms such as linoleum, kerosene, escalator were all at one time registered trademarks.
”All were found to be in the public domain and deregistered.”
Meltzer said the USPTO used a robust registration system that provided several fail-safe mechanisms.
When someone lodged a registration, it was first verified by a team of specially trained trademark lawyers.
If deemed acceptable it is published worldwide with the aid of the internet and anyone could object. All applications, past and present are accessible through their website at www.uspto.gov. If there is no opposition to the application it is registered.
But that is not the end of the matter. Anyone wanting to object after the fact can do so by way of a petition.
This is the route Rooibos Ltd was now taking. Meltzer said the cancellation proceeding was now underway.
She added that Rooibos was likely registered because in 1993 very few people in the US knew what it was.
The world was a much larger place and no one in South Africa seemed to know the word was in the process of registration.
The internet has now made the world much smaller and sensitivity has increased that certain words and terms had meanings in other languages.
As an example she said someone recently tried to register peri-peri as a trademark.
”At first we thought the word was made-up,” she said. ”But a search revealed it was a generic term for what we in the US call ‘hot sauce’ (chili sauce),” she said.
Meltzer added that the USPTO worked closely with several other organisations, such as the International Trademark Organisation to maintain lists of generic words and terms in the public domain to help disqualify attempts to register them.
The public was encouraged to bring such words and information to their attention for inclusion.
According to reports Rooibos is also a registered trademark in several European countries as well as Japan. – Sapa