Background

Geographical indications (GIs) have become an important topic for Africa in recent years (e.g., see the work from Katfriend Titilayo Adebola). This has been spurred by the African Continental Free Trade Agreement (AfCFTA), which added a Protocol on Intellectual Property in 2023. Kenya is one of the 54 signatories to AfCFTA.

The IP Protocol says that "State Parties shall provide for the protection of geographical indications through sui generis systems" and requires each Party to maintain a GI register. Parties may also retain additional protections through trade mark or unfair competition laws. However, the meaning of these obligations won't become clear until the Parties finalise the promised "Annex to this Protocol on Geographical Indications."

Many countries in Africa - especially the Francophone countries - have already adopted sui generis systems for GI protection, while others (including Kenya) rely on collective marks, certification marks or unfair competition laws. In Kenya, section 40A(5) of the Trade Marks Act 2002 provides that "Geographical names or other indications of geographical origin may be registered as collective trade marks." [Merpel: pay attention to the word "may" here!]

Basmati rice is a well-known type of long-grain, aromatic rice. Both India and Pakistan have filed separate applications to register "Basmati" as a geographical indication in the EU, but the matter is unresolved due to the political sensitivities and trade negotiations at play. Meanwhile, India has unsuccessfully sought to register trade marks for BASMATI in several jurisdictions, but the applications were rejected in New Zealand and Australia (see IPKat here; the Australian litigation is still ongoing).

In Kenya, APEDA opposed the registration of six trade mark applications filed by Krish Commodities in 2009 for: Wali Basmati Rice, Rouz Basmati Rice, Pilau Basmati Rice, Nawab Basmati Rice, Rajah Basmati Rice, and Al-Hannan Basmati Rice. The terms "Wali", "Rouz" and "Pilau" describe rice in the Swahili and Arabic languages. APEDA argued that "Basmati" is a geographical indication and the respondent’s marks would mislead the public and take unfair advantage of the distinctive character and goodwill in the geographical indication, so registration should be refused.

In 2013, the Trade Mark Registrar rejected the opposition. There had been no attempt to register "Basmati" as a collective mark, nor was there evidence that the composite marks would mislead consumers in the Kenyan market or constitute unfair competition. In 2017, the High Court upheld this decision, noting that without established rights, APEDA had no standing to bring the opposition. APEDA appealed.

Court of Appeal decision

The Court of Appeal of Kenya handed down its judgment on 3 October 2025 (discussed here). The decision caused some confusion because, while discussing whether APEDA had any enforceable rights, the Court mentioned that "Kenya has since (in 2019) adopted a sui generis framework for geographical indications; but at the time material to this controversy, the Trade Marks Act provided the operative pathway." The problem is: no such Geographical Indications Act, 2019 has been made [Merpel: since neither party cited this legislation in their submissions, readers can probably guess how this hallucination might have made its way into the judgment]. The Court rectified the error on 14 October, acknowledging that "no such Act exists in Kenya. What exists is the Geographical Indications Bill, 2007, and unpublished Geographical Indications Bills, 2019 and 2024. None of them have been enacted into law. We regret the genuine error."

However, the errors seem to run deeper in the Court of Appeal judgment. The Court rejected the appeal, finding that APEDA could only oppose the registration on the basis of a prior registration in Kenya (whether of a collective mark or a geographical indication, although the latter is impossible). According to the Court of Appeal, registration is a pathway "designed to generate the factual record and expert evaluation on which such recognition rests". The Court of Appeal reasoned that:

... the statutory machinery exists precisely to provide clarity and predictability, and that to allow claims of geographical indication protection without domestic registration would introduce uncertainty and ad hoc decision-making.

The Court also took the view that this "interpretation aligns with the logic of intellectual property law: just as trade mark rights flow from registration, protection of geographical indications in Kenya must flow from the statutory recognition pathway." We believe this aspect of the decision is misguided. 

The place of unregistered trade marks in Kenya

Kenya's trade mark system operates on a 'first to file' basis similar to the UK and EU, rather than a 'first to use' basis. The registrar does not require any proof of use of the mark in the country before granting exclusive rights to the applicant and the person who applies to register a trademark is deemed to be the lawful owner of the mark. However, registration of a trademark and the rights granted are not absolute. Firstly, registration is only prima facie evidence of validity of a trademark. This means that the registration and the rights can be rebutted by presentation of contrary evidence. Secondly, trade mark applications may be opposed on the basis of their prior use, as confirmed in Fibrelink v Star Television Productions. Furthermore, the Trade Marks Act confirms that "nothing in this Act shall be deemed to affect rights of action against any person for passing off or the remedies in respect thereof." 

Kenya inherited the English common law system and accordingly recognises the law of passing off. The case law in the UK has long confirmed that this tort can extend to situations where the "goodwill" is held collectively by producers of goods with particular characteristics (from Champagne wine to Swiss chocolate). This form of the action, known as "extended passing off," was an important avenue for the recognition of geographical indications in the UK before the European sui generis GI system came into effect, but has less relevance now (see FAGE v Chobani, IPKat here). 

Back to the APEDA case, the Court of Appeal held that the primary mechanism for recognition of a GI in Kenya was through registration as a collective mark under section 40A. It buttressed this point by stating "it made sense to interpret section 40A(5) as not only permitting the registration of GIs but also as requiring that any party seeking to enforce geographical indications rights against allegedly offending trade marks must first utilize the statutory pathway of registration." The Court said that this "bright line rule" would provide "clarity and predictability".

We respectfully disagree with this approach. 

Passing off remains good law in Kenya, as acknowledged in section 5 of the Trade Marks Act. The Court rejected the possibility of relying on unregistered rights to oppose a trade mark application because this "approach would undermine stability and predictability in the intellectual property regime, and would expose traders to uncertainty over whether words long used descriptively in Kenya might suddenly be declared protected indications." However, passing off cannot be ignored simply because it might be difficult to gather evidence to establish goodwill. Even the institutions of the EU have recognised that extended passing off can be a basis for opposing a trade mark - coincidentally, in a case that also concerned prior rights to "Basmati": Tilda Riceland Private Ltd v OHIM (Case T-136/14 & Case T‑304/09, see IPKat here). The desire to achieve certainty should not be used to deny unregistered marks their rightful place in the trade mark law in Kenya. 

We have no disagreement with the Court of Appeal's view that foreign GIs aren't automatically protected. We agree with the determination that TRIPS does not provide basis for such a claim. There must be recognition within the jurisdiction. But under Kenyan law, this is not limited to registration; the law on passing off, as a form of unfair competition by misrepresentation, can also be a basis for protection if there is evidence of goodwill in the eyes of consumers in the Kenyan market. Section 40A cannot be read and interpreted in isolation from the whole Act.

Lastly, GIs are intended to recognise various social, cultural, and environmental interests. The registration of GIs under the Trade Marks Act is one avenue to recognise the associated economic interests, but lacks the necessary infrastructure to recognise and protect other interests. At the same time, exclusive, individual proprietary claims under trade mark law can have far-reaching impact by restricting the exercise of other social, cultural, and environmental rights and interests.

Final Thoughts

We have no objection to the Court's determination that whether "Basmati" is a geographical indication in Kenya is a question of fact which cannot be determined on appeal stage. The Court of Appeal was correct in declining to embark on fresh determination of fact on this point.

Nevertheless, as a matter of law, we find it seriously concerning that the Court of Appeal would denigrate passing off as a cause of action and deny the relevance of unregistered rights in trade mark proceedings, just because it creates tricky evidential questions. While justifying its findings on the basis that registration creates clarity, fairness and legal certainty in intellectual property claims, the Court has created more uncertainty by reading the word "may" in section 40A as the basis for mandatory formal registration of GIs in Kenya. Contrary to the clear language of the Trade Marks Act as a whole, the decision denies owners of unregistered GIs any legal footing to oppose the registration of trade marks incorporating identical words to the GI.

For these reasons, we hope to see an appeal to the Supreme Court of Kenya in due course. 

Source: https://ipkitten.blogspot.com/2025/10/basmati-decision-in-kenya-disregards.html