Basmati Without a Passport: Kenyan Court of Appeal on Registration, Recognition, and the Constitutional Limits of TRIPS in Kenyan Trade Mark Law
Issue 003 — Full Commentary
“Intellectual property is territorial. Its protection does not travel with the goods.” — adapted from the territoriality principle in Def Lepp Music v Stuart-Brown [1986] RPC 273 (Browne-Wilkinson VC)
I. Introduction
There is something quietly disturbing about a case that takes 16 years before it is finally determined that the appellant filed the case at the wrong forum. That, unclothed of its doctrinal bases, is what the Kenyan Court of Appeal [“the Court”] (Karanja, Muchelule & Ngugi JJA.) found on 3 October 2025 in their judgement in APEDA v Krish Commodities Ltd [2025] KECA 1587. In the appeal, the Agricultural and Processed Food Products Development Authority (hereafter “APEDA”, for short), which is a statutory body created under Indian law for purposes of promoting agricultural exports, spent sixteen years litigating the question of whether the “Basmati” should restrict the registrations of composite trade marks in Kenya. The Court answered in the negative, not necessarily because Basmati is not a geographical indication (GI), but because the appellant, APEDA, failed to register it as such under Kenyan law before filing an objection with the Registrar of Trade Marks in opposition to another party’s application. The Court dismissed the appeal, reaffirming the High Court and the Registrar’s concurrent findings.
This note analyses the judgement, highlighting its terms before narrowing down to the harder questions it refused to address. The reasoning of the court in respect of procedure is sound, and the finding is legally defensible, but the decision is not generous intellectually. At its core, it settles a single procedural aspect that required clarification. What the judgement does not do, in light of the underdeveloped GI jurisprudence of Kenya or what it was required to do, is to explain the meaning of GI substantively as localised under Kenyan law, specifically for generic words, or whether international law’s domestication in the Constitution impacts the requirement of registration. These silences are analysed and practical implications drawn.
II. The Facts
On 13 October 2009, Krish Commodities Limited applied to register six different word marks in Class 30, including Wali Basmati Rice, Rouz Basmati Rice, Pilau Basmati Rice, Nawab Basmati Rice, Rajah Basmati Rice, and Al-Hannan Basmati Rice. Each of the six words expressly disclaimed exclusivity in “Rice” and “Basmati” [2]. In response, APEDA opposed the application, arguing that “Basmati” is a GI denoting a special long-grain aromatic rice which is grown at the Himalayas’ foothills (a special agro-climatic zone) in India and Pakistan. It was their case that, given this reason, the only justifiable path was a refusal of the applicant’s registration as granting the mark would mislead the public [3].
The objection by APEDA was dismissed by the Registrar of Trade Marks sometime in May 2013 because the objector failed to prove its proprietary rights in the word “Basmati” under Kenyan law [4]. Crucially, the Registrar quipped that no registration was sought for “Basmati” as a collective or certification mark in Kenya and that APEDA had not presented sufficient evidence to demonstrate that the inclusion of the disclaimed word as composite marks would be misleading to consumers in Kenya regarding origin [4]. These findings by the Registrar were upheld by the High Court (Mbogholi-Msagha J.) in April 2017, with the court reiterating that through its statutory declaration at the time of filing its opposition, APEDA conceded that the word “Basmati” was not formally registered as a GI even in India [6]. That admission was damaging. The same finding was made by the Court of Appeal sitting as the third successive adjudication forum.
III. The Legal Framework
The relevant international instrument provisions are Articles 22 to 24 of the Agreement on Trade-Related Intellectual Property Rights (TRIPS) 1995. Critically, GI is defined under Article 22(1) as an indication that identifies goods originating in a territory or a region within it where a given quality, reputation, or other characteristic is essentially attributable to that geographical origin. The two provisions under Articles 22(2) and 22(3) create an obligation for member states to set legal mechanisms to avert misleading uses and to refuse or invalidate trademarks that mislead as to origin. However, the exception in Article 24(6) permits a member state not to protect a GI that has become generic in common language within its territory.
At a domestic level, the relevant law at the time of application was section 40A(5) of the Trade Marks Act (Cap. 506). The section stipulates that “geographical names or other indications of geographical origin may be registered as collective trademarks or service marks.” The Court similarly reiterated that, subsequent to the commencement of the dispute, Kenya had enacted a dedicated Geographical Indications Act; this left section 40A as the applicable statutory provision [25]. The constitutional claim by APEDA arose from Article 2(5) and (6) of the Constitution of Kenya 2010, which incorporates international law and any treaties ratified as part of Kenyan law. The argument was that even without domestic registration, the obligations under TRIPS attached through the Constitution’s receptive clause, which addressed the gap in the Trade Marks Act [15]. The court declined this proposition, and correctly so, as will be analysed.
IV. What the Court Got Right
The core holding of the judgement is that a GI’s formal registration is a prerequisite for any successful opposition to a mark application on the grounds of GI. This finding is correct and long overdue at the level of the Court of Appeal. The reasoning of the court is laid down in paragraphs 34 to 40, and it is crucial to understanding why the finding is correct and not merely convenient in the circumstances.
The analysis by the Court commences from a settled point of Constitutional law that TRIPS is not self-executing in Kenya’s legal framework [34]. The premise is that obligations under a Treaty bind the state and not directly on private litigants. In the scenario of GI, Kenya fulfils its obligations under the TRIPS through the Trade Marks Act’s section 40A(5). Therefore, the provision facilitates the collective or certification marks’ registration as geographical names. Protection commences upon registration, and not a minute earlier. The Court stated this explicitly, finding that in the same way that rights relating to trademark arise from registration, so too is true for the GI, whose protection must yield from recognition under the statute [36].
The Court proceeded to address the interpretive question which formed the core of APEDA’s appeal [39]. It ruled that the word “may” as utilised in section 40A(5) does not permit another parallel or optional informal recognition route [39]. Instead, the wording implied the registration eligibility of geographical names either as collective or certification marks, and upon registration, only then does protection commence. In so doing, the Court deployed an ordinary purposive construction, which yielded the correct outcome in the circumstances. Right outcome because the proposed interpretation of “may” by APEDA meant that formal registration would have morphed all trademark disputes on foreign-origin descriptors into a GI inquiry in the first instance. As such, the Registrar would have been converted into an ad hoc tribunal on GI without the necessary institutional capacity, evidentiary framework, or administrative process to assess factual issues inherent in the process of GI recognition. Such questions touch on the claimed exclusivity’s scope, trade practice, consumer perception and historical use [27].
The Court’s finding relied on the Speaker of the National Assembly v Karume [1992] KECA 42 to ground its principle that in instances where a redress procedure is circumscribed by law, it must be strictly adhered to [28]. The position holds, primarily because a GI recognition process involves a specialist factual inquiry which courts are ill-equipped to undertake in proceedings. Similarly, on the question of misleading marks, the Court is also right. APEDA had the evidentiary burden to demonstrate that using “Basmati” as composite marks would be misleading to consumers in Kenya regarding origin. Instead, evidence pointed to the contrary: that “Basmati” was utilised in a descriptive way to denote an aromatic long-grain rice variety, notwithstanding the importer, including for other rice varieties which are domestically grown, such as Ahero or Mwea [46]. Therefore, as observed by the Court, the public deception claims by APEDA remained “at the level of mere assertion” as there was no sufficient evidence advanced in support.
One aspect of the original ruling by the Registrar, which resonated with the Court, deserves further highlighting. In the ruling, the Registrar noted the need to regularise the specifications of goods in all six applications for them to read “Basmati Rice”. This accepted the exclusivity disclaimers over the word “Basmati” by the Respondent [45]. Crucially, under the Trade Marks Act, a disclaimer is not nothing: it serves as a valid legal instrument which inhibits the registered owner of the mark from exercising proprietary rights in the element that is disclaimed. On the whole, therefore, the concern by APEDA that the respondent would “claim proprietary right” over “Basmati” was in effect disgorged by the procedural requirement of the Registrar itself, a point that may have deserved a more robust engagement by the Court than it received.
V. The Critique: What the Judgment Left Unsaid
First, the Court’s judgement is procedurally conservative, which means that at every invitation to robustly shape the jurisprudence, the bench took the narrowest path out. The restraint is defensible, for the simple reason that a second appeal is limited to matters of law. The net effect of this restraint is that the Kenyan Court of Appeal has delved into the concept of GI at length without laying the substantive basis for the actual legal meaning of what GI entails under Kenyan law. There was a chance, but the court shunned the opportunity to use it at every turn.
Second is the question of genericness. The TRIPS’ Article 24(6) stipulates that member states do not have an obligation to protect GI where it has become generic in the territory’s common language. This issue was raised directly by the respondent: the evidence showed that “Basmati” was used as a common descriptor in the Kenyan market for aromatic long-grain rice from multiple sources, including domestically grown varieties [20]. This is not a non-issue because a successful registration of “Basmati” in Kenya under section 40A(5) would still be challengeable if indeed it is generic. The Court refused to pronounce itself on GI status, but it equally remained silent about the concept of genericness, its potential interaction with the registration regime, the evidential threshold it requires, or where the onus of proof lies. Kenya is increasingly generating its own products, such as Taita baskets, Mwea rice, or Mombasa coffee, which will at some point in the future raise these questions at a municipal level. The Court missed a valuable opportunity to begin developing the Kenyan GI jurisprudence.
A comparative analysis renders the Court’s silences even more pronounced. The Court observed that the TRIPs does not expressly sanction any single model of compliance. It briefly examines the provisions under Regulation (EU) No 1151/2012 as the sui generis regime of the EU, the certification mark model of the US, and the approach linked to unfair competition as embraced in other best practices [37]. But the attempted comparative assessment does no more than justify the procedural premise that Kenya embraced the trademark route instead of clearly highlighting the GI status’ substantive test, the standard of evidence or the conditions precedent to registration denial or acceptance. Strikingly, for the Indian case, where APEDA is domiciled, the registration of “Basmati” as a GI was undertaken only in 2023, following more than 20 years of domestic legal procedure. This timeline justifies what the Court suggests: a dedicated process with an elaborately developed evidentiary record. The lesson from a comparative jurisdictional lens is readily available; the Court only stopped short of explicitly localising it jurisprudentially.
Thirdly, the constitutional angle to the dispute is addressed in the most limited way possible. The argument by APEDA, as premised under Article 2(5) and (6) of the Constitution, was not pedestrian or frivolous. The issue of whether the reception clause under the Kenyan Constitution generates a residual duty on the Registrar, even without registration domestically, to decline marks which could be misleading based on their geographic origin deserves more robust engagement by the Court. The Article 22(3) TRIPS obligation is directed at the member state’s legal machinery and not just the registers of registration. The Court treats as obvious the question whether the Constitution, as read with section 40A(5) of the Trade Marks Act, exhausts the obligations of Kenya under the provision [34]. From the judgement, the answer to this question is anything but obvious. The bench concludes that section 40A(5) is the implementing route for TRIPS, as the latter is not self-executing in Kenya. The assessment is right as it goes. What it fails to address is whether Article 2(5) and (6) constitutional monism suggests that the courts retain an aspect of policing’s residual role, potentially allowing for misleading uses of established GIs even before obtaining formal registration. That question will come up again.
Fourth, and lastly, the Court mentions Kenya’s dedicated GI Act 2019 as a sui generis (standalone) legal framework for Geographical Indications (GIs) [25]. In reality, no such Act was ever passed into law. The Geographical Indications Bill, 2007, and unpublished Geographical Indications Bills, 2019 and 2024, were not enacted into law. At the time of this publication, the GI Bill 2026 is still pending before the parliament. The error by the Court is not defensible, as Kenya’s dedicated GI Act 2019 as a sui generis (standalone) legal framework for Geographical Indications (GIs) was not raised directly before it by either party. All these are practical concerns every advocate advising a foreign GI holder or any Kenyan exporter must grapple with at length. Overall, the judgement does the bare minimum in jurisprudential advancement, as the Court squandered the opportunity to begin laying the foundation for the underdeveloped GI law in Kenya.
VI. Way Forward
The most practically relevant facet of the Judgement is not in its holding but rather what it exemplifies. Through its insistence that Kenya’s protection of GIs derives from statutory recognition, the Court has candidly cautioned foreign GI holders, including Indian agricultural authorities such as APEDA, to engage directly with Kenya’s GI statutory framework, currently under the Trade Marks Act [36, 40]. As such, any foreign GI holder desirous of Kenyan market protection must first register as the primary step; approaching the court is secondary. Therefore, if APEDA intends to avert any issues with registering a composite trademark, such as those that characterised this case, it should have filed for recognition by now.
There exists another structural problem arising from the judgement which is unresolved. APEDA is a statutory Indian export authority seeking to exercise rights over a foreign GI within the market of a third country, as opposed to being a private trader. Under Intellectual Property law, the territorial logic, which the Registrar correctly appreciated, suggests that an Indian recognition does not in itself confer rights in Kenya. But the main question relates to the correct position of foreign governmental agencies in GI proceedings in Kenya, or whether they enjoy preferential treatment. These are complex policy questions Kenya must grapple with in the GI Bill 2026, as the trade and agricultural export market of East Africa rapidly evolves.
VII. Conclusion
The judgement in APEDA v Krish Commodities settles one procedural question well before deferring most substantive concerns. Procedurally, for the first time at an appellate court level, the court authoritatively held that formal recognition or prior registration in Kenya is an essential requirement for any successful trademark application opposition on the grounds of GI [36, 41]. The decision ends any arguments advocating for information recognition based on the “may” wording as mounted by APEDA. The lesson from the court is this: if a GI is not formally recognised or registered in Kenya, it cannot be used as a bar to another’s mark registration.
But while the judgement ends the procedural debate, it does little to advance substantive law. The questions it fails to directly confront or resolve relate to genericness, the TRIPS domestication under the Constitution’s reception clause, and the GI recognition evidential standard. Kenya trades, exports, and grows by producing varieties of agricultural produce that are geographically distinctive, and these questions are likely to arise again. The Kenyan GI jurisprudence is still underdeveloped, and the Court had a chance here to lay the groundwork, but chose to defer it. The most procedurally significant takeaway for advocates from the judgement is this: if your client wants GI protection, register it first, and court second; not the other way around.
This article is accompanied by an abridged version for readers seeking a concise overview. Read the summary →
Gody Mwango is an advocate at Mwango Law Advocates, Mombasa, specialising in constitutional litigation, judicial review, and commercial law. He is the founder and managing editor of Mwango Law Review.