Inside Basmati trademark court battle

In 2010, the Agricultural and Processed Food Products Export Development Authority (APEDA) lodged notices of opposition before the Registrar of Trademarks.

It argued that ‘Basmati’ is a geographical indication (GI) referring to a distinctive long-grain aromatic rice cultivated in specific regions of India and Pakistan.

APEDA further contended that registration of these trademarks in Kenya would be misleading to consumers and unfairly exploit the reputation associated with Basmati rice. The Registrar of Trademarks dismissed the oppositions, finding that APEDA had failed to establish any proprietary rights in Kenya or to prove that the use of ‘Basmati’ in the composite trademarks would mislead consumers.

The High Court upheld the registrar’s decision in 2017 but went further in two important respects. First, it clarified that APEDA’s status as a statutory authority in India, charged with promoting agricultural exports, does not in itself confer proprietary or enforceable rights in Kenya.

Second, it observed that, at the time APEDA filed its opposition, ‘Basmati’ had not yet been registered as a geographical indication even in India, further weakening the agency’s claim to exclusive rights abroad. These additions provided greater legal and factual depth to the registrar’s findings and underscored the challenge of asserting cross-border GI rights without domestic recognition.

The Court of Appeal has now affirmed that outcome, maintaining that APEDA lacked a legal basis under Kenyan law to prevent registration.

The key issue for consideration was whether, under Kenyan law and Kenya’s international obligations, particularly the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), ‘Basmati’ qualifies as a geographical indication, and if so, whether its use in composite trade marks can be barred without prior domestic registration or recognition.

The Court of Appeal dismissed the appeal, affirming the decisions of both the Registrar of Trademarks and the High Court. While the court acknowledged that ‘Basmati’ may satisfy the TRIPS Agreement definition of a geographical indication, it held that determining whether ‘Basmati’ qualifies as a GI under Kenyan law was not a question to be resolved in the abstract nor for the first time on a second appeal.

Read: Court backs trader in ‘Basmati’ trademark dispute with India

The court emphasised that any recognition of ‘Basmati’ as a geographical indication in Kenya must follow the statutory pathway prescribed under Section 40A of the Trademarks Act, rather than being addressed indirectly in opposition proceedings to a trademark application.

In its analysis, the court accepted that Kenya is bound by its TRIPS obligations to provide protection for geographical indications and to refuse or invalidate misleading trademarks.

However, it reiterated that TRIPS is not self-executing in Kenya and must be implemented through national legislation. Section 40A (5) of the Trade Marks Act gives effect to these obligations by creating a framework through which geographical indications may be registered as collective or certification marks, enabling questions of scope, control, and use to be properly assessed.

Because ‘Basmati’ had not been registered or formally recognised as a GI in Kenya, APEDA lacked any legal basis to oppose Krish Commodities’ trademark applications.

The court observed that the respondent had disclaimed exclusive rights to the term ‘Basmati’, found no evidence of confusion or deception, and noted that the term had become descriptive in Kenya, commonly referring to long-grain aromatic rice, including local varieties. The court dismissed the appeal in its entirety with costs.

The judgment reinforces Kenya’s territorial approach to intellectual property rights, making it clear that foreign GIs, even those that are internationally recognised, require domestic registration or formal recognition to attract protection.

The decision cements consistent deference to Kenya’s statutory framework, which currently channels GI protection through the Trade Marks Act rather than international instruments.

The case illustrates that Kenyan courts are unlikely to interpret TRIPS directly or expansively, preferring to rely strictly on the domestic legal architecture. For brand owners and foreign producers, the judgment underscores the importance of proactive local registration strategies not only for GIs but for any form of intellectual property rights whose protection originates outside Kenya.

Notably, the Court of Appeal’s reference to the “Geographical Indications Act (2019)” is a factual inaccuracy, as no such Act has been enacted. The Geographical Indications Bill, first introduced in 2019, remains pending. The only operative framework continues to be section 40A (5) of the Trade Marks Act.

GIs are a strategic tool for Kenya’s agricultural sector, offering a pathway to enhance rural development, protect local heritage, and boost export competitiveness.

GIs also promote sustainable farming practices and empower communities by linking product quality to origin, making them a powerful instrument for inclusive economic growth and international market positioning.

For policymakers, it serves as a reminder of the urgent need to enact and operationalise Kenya’s long-delayed GI legislation to align the country’s regime with international best practice and to provide greater certainty for traders and producers.

Until Kenya enacts and implements its Geographical Indications law, GI protection will remain dependent on registration under the Trade Marks Act, and the courts will not infer protection from international instruments such as TRIPS.

Will APEADA take the fight to the Supreme Court? That remains to be seen especially after the Court of Appeal stumbled over a law that is not even in force yet.

The writer is IP Attorney, Von Seidels Kenya