The International Trials and Turbulations for “Basmati”

The popularity of “Basmati” is indisputable. Along with a public perception and global recognition, historical presence as well as recorded evidence reveal its qualities and unique characteristics, as is noted in the statement made by The Agricultural & Processed Food Products Export Development Authority (APEDA). Indian domestic protection to Basmati was granted in 2016 under The Geographical Indications of Goods (Registration and Protection) Act, 1999. In line with the APEDA Act, the organization is authorized to take measures both in India and outside for IP protection of “special products”. Accordingly APEDA has taken active actions including global measures to protect the name “Basmati” and development of a web-based traceability system Basmati.net. One would think this would make it easier for Basmati’s global GI campaign but the same keeps running into trouble.

An extremely concise background of GIs takes one to The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) which mandates statutory protection in the home country before proceeding with international protection. However GIs are a complicated lot and countries might approach their protection differently via a sui generis system, collective or certification marks or through laws relating to modalities focusing on business practices (such as repression of unfair competition or to consumer protection). For protection of GIs abroad, a suitable national, regional or international route maybe chosen.

Let us now take a look at the at recent decisions involving “Basmati”.

APEDA v. Krish Commodities Limited [2025] KECA 1587

Kenya relies on collective trademarks for GI protection. Section 40A(5) of the Trade Marks Act 2002 provides that “Geographical names or other indications of geographical origin may be registered as collective trademarks.” Additionally under section 5 of the Act, action against passing off is recognized.

In this case, APEDA had filed oppositions to 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. Note that each of the six marks included the words “Basmati Rice” but they expressly disclaimed exclusivity over the elements “Basmati” and “Rice”.

While lodging its opposition with the Registrar in 2010 APEDA argued that “Basmati” is a GI and registration of the marks would mislead the public and take unfair advantage of the distinctive character and goodwill in the geographical indication. Rejecting the opposition, the Registrar observed that:

1. APEDA did not establish proprietary rights in Kenya as there no was attempt to register “Basmati” as a collective mark; and
2. APEDA failed to provide evidence that the impugned marks would mislead consumers in the Kenyan market or constitute unfair competition.

Aggrieved, APEDA approached the High Court which upheld the Registrar’s decision in 2017 with the following important observations:

1. APEDA’s statutory status in India cannot be read as automatically conferring the organization with proprietary rights in Kenya; and
2. At the time of filing opposition in Kenya, “Basmati” was not registered as a GI in India, weakening APEDA’s claim to exclusive rights abroad. 

The Kenyan Court of Appeal backed the earlier decisions and clarified that opposition by APEDA was possible only if it had secured prior registration in Kenya as a collective TM and further pressing that registration will be the only way to enforce GI rights against allegedly offending TMs. The Court emphasized that any recognition of “Basmati” as a GI in Kenya must follow the statutory pathway prescribed under Section 40A of the Trademarks Act, rather than being addressed in opposition proceedings to a trademark application. It stated further that there was no evidence of the alleged confusion or deception, noting that the mark had become descriptive in Kenya, commonly referring to long-grain aromatic rice including local varieties.

APEDA v Commissioner of Trade Marks [2025] NZHC 3264

Around the same time as the Kenyan decision, an additional set back was faced at the High Court of New Zealand over the registration of “Basmati” as a certification mark. Here APEDA applied to register the word “Basmati” for rice under class 30. Interestingly the Geographical Indications Registration Act, 2006 provides a regime for registering New Zealand place names as GIs limited for wine or spirits[1], leaving open the means of protection under Trade Marks Act, 2002 along with a combination of the Fair Trading Act, 1986 and the tort of passing off to ensure the public is not mislead at to the true origin of goods on sale.

Upon examination of APEDA’s application, the IP Office of New Zealand (IPONZ) denied registration on the grounds that –

1. proposed certification mark lacked distinctiveness and was not capable of distinguishing products certified by APEDA from others. Evidence submitted was insufficient to overcome this deficiency; and
2. APEDA’s certification rules are inadequate to fulfill the relevant statutory requirements, detailed here.

IPONZ also remarked that the certification mark proposed to be used would not serve to distinguish Indian basmati rice from basmati rice grown by traders in other regions (especially Pakistan, but also other countries like Nepal). The APEDA led evidence on “Basmati” mark signaled clearly that the origin of basmati rice sold in New Zealand is from a wider geographical region, and not justthe rice confined to those producers whose products are certified by the Indian organization.

On appeal, the High Court upheld the earlier decision stating that “Basmati” failed to pass the test of distinctiveness because in all likelihood Pakistani traders/ producers use the term as an accurate description of their own product. Reading the likelihood of other traders usage of same or similar mark in good faith, as an inherent impediment to test distinctiveness of the certification mark proposed by APEDA and leading to exclusion of such other parties. The Court additionally rejected APEDA’s additional labelling proposal saying a mark must be distinctive on its face without having to rely on accompanying information.

On the transnational nature of Basmati Rice, the Court dew a critical comparison with the Mānuka honey certification mark applications filed by the New Zealand Mānuka Honey Appellation Society, similarly rejected by the EUIPO and UKIPO on the basis that the name “Mānuka” alone wasn’t capable of distinguishing New Zealand Mānuka honey from uncertified, but equally genuine, honey produced in Australia.

The Takeaways  

It is clear from the Kenyan decision that TRIPS is the broad mandate under which member nations have chosen the means by which to protect GIs and compliance with domestic statutory provisions is the only option. However this does not exhaust praying for relief under passing off if evidence points to goodwill. In any case, the only legal provision recognizing protection of GIs in the country uses the term may! Finally envisaging protection of GIs as collective trademarks possibly do hurt their rationale rooted in equitable treatment of a community. Although a point of concern remains as to APEDA’s inaction to seek domestic registration.

Coming to the decision from New Zealand where “Basmati” is held to be descriptive and its registration as a certification mark turned down as it may result in exclusion of genuine users from India’s neighbouring countries. APEDA’s attempt to resolve this by stating it will amend the regulations to go along with the certification mark to ensure that they wouldn’t enforce rights against Pakistani growers, did not stand. Ultimately the hint of descriptiveness and transnational nature of production hit this campaign.

The question as to APEDA’s next move looms large. And in New Zealand or elsewhere, transnational cooperation over the recognition and protection of “Basmati” seems highly unlikely. The larger concern however is the trouble that can be caused due to this rather complex situation. Basmati rice is a widely popular product and use of false GIs by unauthorized parties may only prove detrimental to consumers and legitimate producers. 

Authored by: Ms. Hetvi Trivedi