Multi-national footwear maker Bata Shoes has failed to stop its rival manufacturer from producing shoes similar to its Toughees brand popular among schoolchildren.
Justice Josephine Mong’are said the claim filed by Bata Brands SA and Bata Shoe Company (Kenya) Limited against Umoja Rubber Products Limited over the ‘Toughees’ trademark lacked merit.
The gist of the case was alleged confusion of the two brands —’Toughees’ belonging to Bata and ‘Shupavu’ belonging to Umoja.
Justice Mong’are found that from the evidence, the two brands were not similar and there was no confusion since they had differences in their design and even if the design and shape were similar, the same was not unique or registered to Bata.
She added that the two companies had different shops and there was no evidence that Umoja had been passing off its shoes as those of Bata.
“No remedies are available to Bata as they have failed to demonstrate that Umoja has been passing off its shoes as those of Bata or that they were misrepresenting to the public that their shoes are those of Bata.
I have also found that the overall and holistic get up of the two brands of shoes are not similar and that the design relied upon by Bata is not unique to them and has been present and registered by another company before Bata began production,” said the judge.
Bata sued in December 2017 stating that they were the designer and owner of school shoes manufactured, sold, and advertised under the trademark ‘Toughees’ for the last 15 years.
According to Bata, the said shoe was characterised by a special, distinct, and unique shape, design, configuration, pattern, features and appearance.
Bata alleged that in January 2017 they became aware that Umoja was manufacturing, distributing, and selling similar school shoes branded ‘Shupavu’, which embodied a design identical or substantially confusingly similar to that of ‘Toughees’.
It said Umoja had reproduced and copied the alleged distinctive design shape, and that it was passing off its shoe as that of Bata. Bata tabled evidence showing that it sold more than one million pairs of Toughees shoes each year from 2010 to 2016 and that it was only in 2017 after Umoja started distributing and selling its ‘Shupavu’ branded shoe that the number of pairs dropped to 807,296 pairs.
Apart from an order restraining Umoja from manufacturing a shoe similar to Toughees, Bata also wanted to be paid damages with interest.
However, Justice Mong’are dismissed the claim and said it was not denied that much of Shupavu’s shoes were purchased from its manufacturing shops and that Umoja did not stock Bata’s Toughees shoes.
“This means that a reasonable person would generally go into Umoja’s manufacturing outlet looking specifically for Shupavu shoes and not Toughees shoes. I am also in agreement with Umoja’s submission that from Bata’s report, many consumers prefer buying Bata’s Toughees shoes which implies that many of them know about Toughees shoes and they would not be easily deceived by Umoja’s Shupavu shoes,” said the judge.
She also found that Umoja had been able to demonstrate that the design of the shoe had been in use by companies other than Bata and was registered and manufactured by those companies before Bata began manufacturing.
Through its Legal Manager Prisca Wambui Chege and a marketing research consultant at SBO Training & Research Limited Boniface Ngahu, Bata tabled copies of invoices and select photographs and printouts of promotional and advertising materials and sample photographs of Umoja’s school shoes showing the offending design shape.
Bata said it incurred significant expenses over the years carrying out extensive advertising and promotional activities of the “Toughees” shoes in print and electronic media.
Bata stated that its school shoes had acquired significant goodwill and reputation among the Kenyan public. The court heard that the goodwill resulted from the extensive manufacturing, distribution, sale and advertising conducted by Bata.
Umoja also called two witnesses— Wangechi Chege (Project Manager at Consumer Insight—a market research firm) and its director Jinal Shah.
It tabled photographic representation of shoes manufactured by other companies to buttress their point that Bata did not have a monopoly on the shape and design of the Toughees shoes.
Further, the disputed design was registered to C&P Shoe Industries Limited on September 28, 2001, even before Bata allegedly started using it in making its shoes in the year 2002.
It said this confirmed that the design and shape of the Toughees shoe was not special, distinct and unique as alleged or at all.
