Commercial IP Dispute – Bata Brands SA & Another v Umoja Rubber Products Limited (Commercial Case 501 of 2017) [2025] KEHC 5186 (KLR) Judgement

The High Court delivered a significant ruling in a commercial IP dispute between two major players in Kenya’s school shoe market—Bata and Umoja Rubber Products. The decision offers timely reminders on the legal boundaries of goodwill, design rights, and the evidentiary burden in passing off claims.

Plaintiff’s Case (Bata Brands SA)

• Bata, the designer and owner of “Toughees” school shoes, filed a suit on December 20, 2017. They claimed that their “Toughees” shoe, which they had been manufacturing, selling, and advertising for 15 years, was characterized by a special, distinct, and unique shape, design, configuration, pattern, features, and appearance.
• Bata alleged that in January 2017, they discovered Umoja was manufacturing, distributing, and selling “Shupavu” branded school shoes that embodied a design identical or substantially confusingly similar to Bata’s. Bata contended that Umoja had reproduced and copied their distinctive design and was passing off its “Shupavu” shoe as Bata’s.
• As a result, Bata sought orders to restrain Umoja from passing off its shoes as Bata’s, delivery of Umoja’s shoes bearing the alleged distinctive design, an inquiry into damages or an account of profits made by Umoja, and payment with interest.

Defendant’s case (Umoja Rubber Products Limited)

• Umoja, in its Statement of Defence dated June 21, 2019, argued that the design of Bata’s “Toughees” shoes was neither distinctive nor unique. Umoja contended that similar designs, shapes, configurations, patterns, and features had been embodied in school shoes manufactured by several other companies, including C&P Shoe Industries Ltd, Bantu Shoes, Reddamac Leather Centre, Worldboots Ltd, and Addison Industries.
• Umoja also stated that the design of its “Shupavu” branded school shoes was not identical to Bata’s and had several distinguishing features. Umoja denied passing off its “Shupavu” shoes as “Toughees”. Furthermore, Umoja claimed that even if Bata had a right to legal protection for the “Toughees” design, the statutory protection for industrial designs, which is fifteen years, would have lapsed by 2017, as Bata allegedly started manufacturing “Toughees” in 2002
• Umoja also noted that Bata could not claim protection for a design already registered in favor of another company, specifically C&P Shoe Industries Limited, whose design was registered on September 28, 2001, prior to Bata’s alleged use.
• Consequently, Umoja asserted that the “Toughees” design was not a badge of origin for Bata’s shoes

Courts determinations

• The court found that Bata’s “Toughees” had indeed acquired significant goodwill and reputation among the Kenyan public over the last 15 years. This conclusion was based on evidence of Bata manufacturing and selling “Toughees” for over 15 years, significant sales volumes, brand awareness and loyalty.

However, the court clarified that this goodwill was primarily associated with the “Toughees” brand name, not with any special, distinct, or unique features, shape, or design of the shoe. The court accepted Umoja’s evidence that the design had been in use by companies other than Bata and was registered by C&P Shoe Industries Limited in 2001, before Bata began manufacturing.

• The court found that the two brands, “Toughees” and “Shupavu,” generally “do not have the same get up from their design”. The court noted that even if the design and shape were similar, the design was “not unique or registered to Bata”.

It also highlighted that Umoja’s report indicated that, other than the material and outsole, the public could generally differentiate between Bata’s “Toughees” and Umoja’s “Shupavu,” and that the packaging of the two products allowed for differentiation. Therefore, the “overall and wholistic get-up” led the court to conclude they were not similar in design and packaging.

The court concluded that Umoja was not passing off its shoes as Bata’s because:

1. The two brands have a different “get up” except for the material and outsole.
2. Much of Umoja’s “Shupavu” shoes were purchased from its manufacturing shops, and Umoja did not stock Bata’s “Toughees”. This suggested that consumers specifically sought “Shupavu” shoes.
3. Many consumers prefer buying Bata’s “Toughees,” implying awareness of the brand and less likelihood of deception by Umoja’s “Shupavu” shoes.
4. There was no evidence that Umoja was passing off its shoes as Bata’s.

• The court held that no remedies were available to Bata as Bata failed to demonstrate that Umoja was passing off its shoes as Bata’s or misrepresenting them to the public. The court reiterated that the design Bata relied upon was not unique to them and had been present and registered by another company before Bata began production.
• Consequently, the court found that the plaintiff’s case was without merit and dismissed the suit with costs.

Key Implications

• Goodwill alone is not sufficient to succeed in a passing-off claim based on product design or “get-up” if the design elements themselves are not unique to the claimant.
• The judgment underscores the importance of proving actual confusion or misrepresentation. Since the court found no “confusing similarity” in the overall “get-up” and no evidence of Umoja actively passing off its goods.
• This highlights that distinctiveness of the alleged copied feature and actual misrepresentation are crucial elements for a successful passing-off claim.