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Court backs trader in ‘Basmati’ trademark dispute with India
The Agricultural and Processed Food Products Export Development Authority (APEDA) wanted the Court of Appeal in Nairobi to overturn a decision by the High Court that allowed Krish Commodities Limited to register six trademarks bearing the word Basmati.
An agricultural export promotion agency of the Indian government has lost its bid to stop a Kenyan trading company from branding its imported rice as 'Basmati Rice'.
The Agricultural and Processed Food Products Export Development Authority (APEDA) wanted the Court of Appeal in Nairobi to overturn a decision by the High Court that allowed Krish Commodities Limited to register six trademarks bearing the word Basmati.
The contentious trademarks were listed as Wali Basmati Rice, Rouz Basmati Rice, Pilau Basmati Rice, Nawab Basmati Rice, Rajah Basmati Rice, and Al-Hannan Basmati Rice.
APEDA argued that the Basmati was a geographical indication (GI) in India, and it was wrong for Krish, a rice importer, to register it as a trademark.
A GI is a name that protects products from specific regions. The gist of the contention was that permitting Krish to register the trademarks containing the word “Basmati” would mislead Kenyan consumers into believing that the trader had proprietary rights over the term or that the rice in question necessarily originated from the Himalayan foothills of India and Pakistan.
However, the Court of Appeal bench consisting of justices Wanjiru Karanja, Aggrey Muchelule, and Joel Ngugi affirmed the April 2017 orders of the High Court, upholding the decision of the Registrar of Trade Marks to dismiss the case.
“We conclude that the respondent’s (Krish Commodities) registrations of composite marks incorporating 'Basmati' were not prohibited under Kenyan law, and that the Registrar and the High Court correctly so found,” said the judges.
The judges said APEDA did not show evidence that the composite marks would mislead Kenyan consumers as to the origin of the rice called “Basmati”.
They observed that while “Basmati” may qualify to be a GI within the meaning of Article 22 of Trade-Related Aspects of Intellectual Property Rights (TRIPS) and section 40A of the Trade Marks Act, it has not been formally recognised or registered as such in Kenya.
Article 22(3) of TRIPS mandates refusal of trademarks containing GIs where their use would mislead as to origin.
But, according to the court, until the word ‘Basmati’ is formally recognised in Kenya as a GI, the Registrar of Trademarks and the courts have no clear legal basis to treat it as such.
“Without such registration or formal recognition, the appellant lacked the legal footing to object to the respondent’s trade mark applications solely on the ground that they incorporated the word 'Basmati.' The record does not demonstrate that the respondent’s composite marks were misleading or otherwise prohibited under Kenyan law,” ruled the judges.
In the legal dispute that started in 2013, APEDA argued that the company’s use of the trademark would mislead the public and take unfair advantage of the distinctive character and goodwill in the geographical indication.
For its part, Krish said it never intended to claim a monopoly over the word “Basmati”. Krish also rejected the APEDA’s claim that registration of its marks would be deceptive or misleading.
It argued that in Kenya, the term “Basmati” had become a common descriptor for a variety of aromatic long-grain rice available from different sources, including locally grown rice in Mwea and Ahero irrigation schemes.
