The Ghost Statute and the Passing Off Gap: What APEDA v Krish Commodities Leaves Unresolved
Issue 005 — Continues where Issue 003 broke off.
Issue 003 of this Review examined APEDA v Krish Commodities Ltd [2025] KECA 1587, a judgement of the Kenyan Court of Appeal [“the Court”] (Karanja, Muchelule and Ngugi JJA.) delivered on 3 October 2025. The central finding of the Court that enforcement of geographical indication rights in Kenya requires prior formal recognition through the statutory mechanism under section 40A(5) of the Trade Marks Act (Cap. 506) was, as that critique argued, doctrinally sound. Where Issue 003 broke off, however, is where Issue 005 begins. What this piece examines fully are two distinct problems highlighted in passing in the analysis in Issue 003 that the judgment leaves behind: an error of statutory fact that has gone uncorrected in the authoritative record, and a common law cause of action that was available in APEDA but was never pleaded.
In the judgement’s paragraph 30, the court states explicitly that “at the material time, section 40A was the operative route for protection of geographical indications in Kenya, the dedicated Geographical Indications Act only being enacted in 2019.” The problem with this position is that the legislation, the Geographical Indications Act, presumably enacted in Kenya in 2019, is nonexistent. A Geographical Indications Bill was introduced in the National Assembly and debated, but it lapsed without becoming law. To date, Kenya has not enacted standalone, sui generis GI legislation. The court cited a ghost statute, in effect weaving its judgement around a piece of legislation that does not appear in the statute book.
This matters beyond the embarrassment of a factual inaccuracy in a Court of Appeal judgment. In an instance where an official record of a judgement of the court contains an error that was detected but never corrected, it doesn’t just affect this case; instead, it sits there as citable “law” for anyone who retrieves the judgment later from the Kenya Law Reports official database. In APEDA, the reference to the non-existent 2019 GI Act is not a mere slip or a one-time mention that is easily correctable, but a legal premise that is deeply intertwined with the entire judgement’s structure. The reference to the statute performs an essential structural function by permitting the court to locate section 40A of the Trade Marks Act (Cap. 506) as a transitional provision currently replaced by a dedicated GI regime, which is more sophisticated. If that 2019 Act does not exist, the judgement’s doctrinal foundation begins to crumble: the GI protection framework in Kenya today is exactly what it was in 2009 when Krish made an application for its marks, as there has not been any legislative upgrade. What this means is that the question of the protection available to GI rights holders in Kenya is still founded on section 40A of the Trade Marks Act and nothing else.
In APEDA, the court issued a correcting slip some eleven days following the judgement delivery. But can a correcting slip cure the underlying structural deficiencies if the statute that formed the substratum of the judgement does not exist? The Kenya Law Reporting database, which is the platform from which appellate benches, trial courts, and advocates obtain citations, still retains the erroneous paragraph. As such, any advocate referring to this judgement for the argument that the GI Act 2019 was enacted in Kenya cites a legislation that does not exist. As of the time of this publication, the slip, as yet, has not been effected to cure that risk.
The second problem is much deeper. The case pleaded by APEDA was entirely statutory, primarily because it contended that “Basmati” was a geographical indication under TRIPS and section 40A, and that Krish’s composite marks should accordingly be refused or expunged. It did not expressly plead passing off. That omission was fatal as it left on the table a cause of action that the reasoning of the court does not, and could not, close. The rationale is that it is a settled point of law in Kenya that parties are bound by their pleadings. At common law, passing off requires proof of three different elements: goodwill attaching to the claimant’s mark or indication in the relevant market; a misrepresentation by the defendant likely to lead the public to believe that its goods are the goods of, or are associated with, the claimant; and damage to that goodwill, actual or likely. Therefore, registration is not necessary. The cause of action is founded on tort law, and not the law governing the registration of intellectual problem, which proposition is expressly preserved by section 103 of the Kenyan Trade Marks Act as a fall-back position alongside the legislative regime.
From comparative jurisprudence, the English Court of Appeal sitting in Taittinger SA v Allbev Ltd [1993] FSR 641 restrained a non-alcoholic sparkling drink from trading under the name “Elderflower Champagne” on passing-off grounds, without any reliance on the geographical indications register. The question squarely before the bench was whether the public would be misled as to origin and whether producers with a legitimate claim to the goodwill in “Champagne” would suffer damage as a result. The decision of the UK Court of Appeal in Taittinger, and in particular to a passage from the judgment of the Master of the Rolls noted as follows in respect of the action for passing off: “This proprietary right recognised by the law [of passing off] is not a right in the name, mark or get-up itself: it is a right in the reputation or goodwill of which the name, mark or get-up is the badge or vehicle” [674-675]. Correspondingly, the US Lanham Act’s section 43(a) stipulates that a geographical mark that has acquired secondary meaning is actionable without prior registration as a certification mark. A secondary meaning connotes where consumers associate it with a particular origin rather than treating it as a generic description. In both jurisdictions, common law and quasi-common law routes have been formulated to protect geographical distinctiveness that operates outside the statutory registration regime.
Critically, however, the mentioned common law trajectories are similarly extinguished by the same evidence that defeats a GI claim under the legislation: proof that the term has become generic in the relevant market. At common law, a mark that has passed into general descriptive use, what English courts have called “degeneration” and what article 24(6) of TRIPS recognises as a term “customary in common language”, is incapable of grounding a claim for passing off. The reasoning is that such a mark lacks the requisite goodwill capable of being appropriated by a defendant who is merely using a descriptor. Juxtaposed, this point shows with precision that double-edged evidence quality in APEDA v Krish. Here, the court observed that “Basmati” was used descriptively across the Kenyan market by several importers, including locally grown aromatic rice from Mwea and Ahero, with no exclusive consumer association pointing to the Indian subcontinent. That finding alone destroyed the GI claim by APEDA for the reason that there was no domestic recognition through formal registration, hence no exclusivity. This same finding would have simultaneously extinguished a claim on passing off as it confirmed that “Basmati” operated as a generic descriptor for a type of rice rather than as a badge of origin pointing exclusively to a particular geographical source. Assessed from all angles, the real strength of the claim in Krish did not lie in the statutory argument. Rather, it lay in the market evidence of generic use, and the court’s findings of fact confirmed it in passing.
APEDA v Krish judgement leaves advocates with a correctly resolved statutory question and an uncorrected error of fact with consequential implications for the state of Kenyan GI law. Crucially, the judgement is silent on the common law route, whether intentionally, as it was not expressly pleaded, or inadvertently due to the framing of paragraph 46 in the broad language which forecloses any questions which were never posed to the court directly.
Advocates advising clients of GI matters in Kenya must adopt a dual parallel track at the same time. The legislative track is followed under section 40A registration as the primary route, which requires a deeper comprehension that there is no dedicated GI Act enacted in Kenya to complement it, notwithstanding the error on record contained in paragraph 30 of APEDA v Krish. The common law route requires gathering of evidence that the mark functions as a badge of origin rather than a category description, including trade use patterns documentation and consumer surveys establishing origin-specific goodwill, long before a dispute crystallises. In the absence of that evidentiary buffer, both routes are slippery, and neither is available.
The judgement in APEDA v Krish candidly cautions advocates about what does not work. On the contrary, the question relating to whether passing off, properly pleaded and grounded in Kenyan consumer evidence, can fill the gap that section 40A leaves open is the live question the judgment leaves unanswered. That is the case waiting to be brought.
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.