THE rooibos industry is fighting to protect its intellectual property after a French company applied to register a number of trademarks incorporating the terms "South African Rooibos" and "Rooibos" last year.

If the French company is successful, it would own the exclusive rights to the names of any rooibos products sold in France, a key market in the European Union, which is the biggest export market for rooibos.

Rooibos is an indigenous plant grown solely in parts of Western Cape and Northern Cape.

A similar decade-long battle with Texas-based Burke International, which trademarked rooibos in the US and demanded royalties from any entity using the term, was settled out of court in 2005.

Despite the long-running US dispute, South Africa still does not have a legal framework for unique indigenous products like rooibos, honeybush, buchu, hoodia and Karoo lamb to get protection in international markets.

Local industries have no legal basis to prevent any company anywhere in the world trademarking any of these terms as they have not registered the necessary trademarks, often because of the costs involved. In many countries, including France, there is also no way to legally ensure that a product sold as honeybush is in fact honeybush.

Because of their unique properties and geographical exclusivity, products such as rooibos and honeybush could qualify for protection as a geographical indication (GI) in the same way as other origin-based names such as champagne, port and sherry. This would mean that "rooibos" could only be used if certain standards upholding the link with the territory are met, for instance that it was actually produced in Western Cape or Northern Cape.

Following the near-loss of the term rooibos in the US, the rooibos industry attempted to obtain protection as a GI in the EU. While the EU regulation provides for the registration of non-EU country GIs, it is conditional on the term being protected in its country of origin, said Cerkia Bramley, food law researcher at the University of Pretoria.

Given the lack of a legal framework for protecting GIs in South Africa, the only option for local industries is to pursue domestic protection as either a collective or certification mark under the Trade Marks Act. The South African Rooibos Council (SARC) has applied for registration of a certification mark to get GI protection in the EU.

However, getting domestic protection is just one step in a complex and time-consuming process to prepare a dossier for a GI application to the EU.

This process includes establishing detailed specifications and criteria to be met for a product to qualify as rooibos and appointing a certification body to verify that standards are met, said Soekie Snyman, coordinator at the SARC. The process is complicated by vague rules and a legal quagmire.

Local industries that lack the financial means and capacity to prepare the necessary dossier may find themselves unable to get this protection, Bramley said. In the meantime, foreign entities with no link to the region are taking advantage of the marketing potential embedded in terms that are part of South Africa's national heritage, she said.

MacDonald Netshitenzhe, chief director: policy and legislation at the Department of Trade and Industry, said the existing Trademarks Act provides safeguards for GIs. Proposed amendments to existing intellectual property laws that deal with traditional knowledge were referred back to parliament by President Jacob Zuma last year for possible discussion.

* This article was first published in Sunday Times: Business Times