The recent decision of the Court of Appeal of Kenya rejecting APEDA’s challenge to several ‘Basmati’ trademarks marks the latest chapter in a long-running cross-border dispute over geographical indications. Vikram Raj Nanda highlights how the ruling brings to the forefront key questions on the territoriality of IP rights and the boundaries between GI and trademark protection. Vikram Raj Nanda is a third year student at National Law School of India University, Bengaluru with a keen interest in IP law, Competition Law, and Arbitration. His previous posts can be accessed here. [A very big thanks to Prashant Reddy T. for sharing this development with us.]
Lessons from APEDA’s Basmati GI-TM Defeat in Kenya
By Vikram Nanda
In a decision dated 3rd October, 2025, the Court of Appeal of Kenya dismissed an appeal by India’s Agricultural and Processed Food Products Development Authority (APEDA) challenging the registration of several trademarks containing the term ‘Basmati’. This dispute traces back to 2009 when Krish Commodities, a Kenyan entity, sought the registration of the following trademarks bearing the name ‘Basmati’: Wali Basmati Rice, Rouz Basmati Rice, Pilau Basmati Rice, Nawab Basmati Rice, Rajah Basmati Rice, and Al-Hannan Basmati Rice. APEDA has consistently claimed that the term ‘Basmati’ is a geographical indication (GI), that refers to a certain variety of rice grown in the Indian subcontinent, and the utilisation of such a term by a Kenyan entity would be misleading to the public and against the geographical origin of the product itself.
However, APEDA had consistently lost before the national courts of Kenya, with both the Registrar (see here) and the High Court (see here) having earlier dismissed their opposition. With the Court of Appeal now affirming those findings, the dispute raises important questions about the scope of GI protection, the territoriality of IP rights, and the interface between trademark and GI law.
Background
Basmati rice has had a long history of disputes regarding its registration as a GI. India and Pakistan both have been embroiled in a long running dispute regarding the registration of Basmati as a GI (see earlier posts here and here). APEDA has been at the forefront of this litigation and has relentlessly pursued the protection of Basmati rice’s status as a GI, both in India and abroad. In fact, the APEDA Act, 1985 was itself amended in 2009 to allow it to protect the IP rights of ‘special products’ in and outside India – notably, ‘special products’ as mentioned in the Second Schedule of the Act include only ‘Basmati Rice’. India also domestically granted Basmati Rice protection as a GI in 2016, with APEDA being registered as its proprietor (see here). While APEDA has made efforts to secure Basmati’s GI recognition internationally, it has also faced several setbacks. Beyond Kenya, for instance, APEDA’s application to register Basmati as a certification mark was most recently rejected by the High Court of New Zealand (see here – sourced from IPKat).
Before discussing the Court of Appeal’s decision, certain points must be kept in mind. First, it is well established that intellectual property rights are territorial in nature. A GI registered in one country does not automatically enjoy protection elsewhere. Second, Kenya lacks a sui generis domestic law for the protection of geographical indications. As a result, marks that denote geographical origin must instead be registered as collective trademarks under Section 40A(5) of Kenya’s Trade Marks Act.
In this scenario, APEDA had raised some interesting arguments before the Court. It argued that Section 40A(5) stated that a mark containing a geographical origin ‘may’ be registered as a collective trademark. Consequently, it was only discretionary in nature to register a GI under this provision and not mandatory. Consequently, APEDA further claimed that a GI in such a scenario may be registered under international law, i.e., under Article 22 of the TRIPS which obliges member states to prevent trademarks that mislead as to the origin of the goods.
What did the Court of Appeal say?
As mentioned, the Court of Appeal dismissed APEDA’s contentions and affirmed the decision of the High Court and the Registrar. The Court based its decision on the following main grounds: Firstly, it acknowledged that ‘Basmati’ may independently serve as a GI under the TRIPS regime. However, they noted that TRIPS is not a self-executing regime, and it requires the enactment of specific legislation by the concerned member state. In the absence of any sui generis GI regime in Kenya, the Court held that APEDA’s contention would fail (it is interesting to note here that earlier the decision held that there was indeed a specific legislation for GI in Kenya – however, later on it was acknowledged that no such legislation existed and a clarification was issued).
Consequently, the Court noted that recourse must have been made to the existing framework under Section 40A(5) of the Kenyan Trade Marks Act. Given that there was no attempt by APEDA to seek registration under this operative framework, the Court dismissed their appeal. More generally, while discussing whether utilising the phrase ‘Basmati’ was otherwise prohibited in law, the Court of Appeal also held its usage would likely not lead to any confusion or deception as it had become a general descriptive term referring to a certain variety of an aromatic long grain rice.
Equating GI to Trademarks?
Having given a broad overview of the case, I shall discuss some of the implications arising from the Court’s reasoning. Now, a major plank of the Court’s decision was that the existing Section 40A(5) regime served as an adequate means of protection for GIs and that APEDA undertook no steps to seek registration under this operative framework. Let us unpack this a bit.
Under the TRIPS regime, member states have been mandated to ensure a minimum standard of protection for GIs. This is set out in Article 22 of TRIPS, which provides that member states must provide for legal means for protection of GIs, but it leaves open the choice of what those means may be. Consequently, states usually typically adopt one of these three approaches: (a) enacting a sui generis GI regime, (b) providing protection through its existing trademark regime or (c) unfair competition laws (see here). Many states choose to continue with their existent frameworks and provide protection through the trademark route (most notably, the USA).
Kenya, too, follows this approach and provides protection under its existing trademark law, particularly through collective trademarks. To seek protection under Section 40A(5) as a collective trademark, the onus lay on APEDA to prove ‘historical use’ in Kenya, ‘consumer protection’ ‘trade practice’ etc (p.27). While this does align with the TRIPS obligations, a deeper question may be raised.
Despite certain overlaps, it cannot be denied that the trademark regime differs starkly from a GI regime. For instance, the Delhi High Court has recognised this, in principle, in Asociacion De Productores De Pisco A.G vs Union Of India (2025) (discussed previously here). In this case, the Court specifically noted the differences between the schemes of the Trade Marks Act, 1999, and the GI Act. Trademarks, as per the court, operate as private rights that serve the function of identifying the manufacturer of the goods/services in question. On the other hand, GIs are collective and not private rights, and their function is primarily to indicate the origin of a product and certain characteristics or qualities of the product that are attributable to that origin.
Consequently, even though certain features of GIs are approximated by collective trademarks, the latter nonetheless remain rooted in a private rights framework that requires the demonstration of factors like prior use, which are not really ideally suited for a GI analysis. Hence, using a collective trademark framework to protect GIs risks distorting the underlying rationale of GI protection, effectively converting a community-based right into a commercial badge of trade origin. That said, this critique operates merely on a theoretical level, and the Kenyan Court cannot really be faulted for this as there is no specific mandate to enact a sui generis GI regime. Perhaps, this also raises some questions on APEDA itself: APEDA sought to protect its rights back when they filed notices with the Registry in 2010. Till now, there has been no attempt by them to domestically seek registration as a TM. Consequently, pursuing protection without first exhausting this available route may not have been the most strategic approach. This naturally also raises the question as to what else APEDA could have argued which I shall discuss in the next section.
What else could APEDA have argued? Some Concluding Thoughts
One possible view, as expressed elsewhere, was for APEDA to have argued under the claim of extended passing off (see here). This is a claim not requiring prior registration and is largely derived from common law. Extended passing off refers to a situation where the defendant deceives as to the origin or nature of its goods by misrepresenting that they are the product of a particular region or that they have a particular character or composition (see here). However, once again, to go back in a circle, the problem here is that this requires proving goodwill and other factors that are alien to a conventional GI analysis and more relevant to a trademark analysis. As per the Court of Appeal decision, APEDA had not specifically led any arguments centred on goodwill, prior use etc. Perhaps one of the reasons for not leading such arguments may also be due to a lack of available information on these aspects.
That said, the challenges APEDA faced in Kenya are not unique. As mentioned, the ‘Basmati’ GI has been subject to disputes in other countries as well. In New Zealand, for instance, the domestic GI law only relates to wines and spirits. Consequently, APEDA had to resort to the law governing certification trademarks (a move it could have explored in Kenya as well). However, that too had its own challenges. The High Court of New Zealand noted that (see here) though Basmati may refer to a distinct kind of rice, the problem lies in its transnational nature of cultivation and APEDA alone using it as a certification mark would effectively unfairly preclude other Basmati rice producers, predominantly from Pakistan, from selling Basmati rice.
Taken together, I believe this discussion does point to certain doctrinal inconsistencies that may result given that we lack a harmonised GI regime across nations. TRIPS, while establishing certain standards, leaves it to member-states to design their own domestic or bilateral mechanisms for GI recognition and enforcement. In countries like Kenya, where no sui generis regime exists and there is no bilateral treaty recognising common GIs, claimants are left to rely on trademark analogies or passing off claims, both of which are not ideally fit to the rationale of GI protection. At the same time, APEDA must also take its lessons, if it is to ‘protect’ such IP rights and adopt more jurisdiction-tailored approaches going forward, rather than simply making claims under the TRIPS or not seeking domestic registration.