Bata Brands Sa & 1 other v Umoja Rubber Products Limited

in January 2017, they became aware of the fact that Umoja was manufacturing, distributing, branded "Shupavu" which embody selling a school design shoes identical or substantially confusingly similar to that of Bata. That Umoja had reproduced and copied the alleged distinctive design shape, and that it was passing off its shoe as that of Bata. Bata therefore seeks for orders restraining Umoja from passing of its shoe as that of Umoja, an order for delivery of Umoja’s shoes bearing the alleged distinctive design and shape, and an inquiry as to damages or an account of profits made by Umoja as a result of the alleged passing off, as well as an order for payment, together with interest. 2. In response to the suit, Umoja, through a Statement of Defence dated 21st June 2019 contends that the design of Bata’s Toughees shoes was neither distinctive nor unique as it was similar to the design, shape, configuration, pattern and features has been embodied in school shoes manufactured by several other manufacturers such as C&P Shoe Industries Ltd, Bantu Shoes, Reddamac Leather Centre; Worldboots Ltd, and Addison Industries. Consequently, that the design of the Toughees shoes was not a badge of the origin of the shoes. Umoja states that the design of its Shupavu branded school shoes was not identical, and/or confusingly similar to the design of the Toughees shoes as there 2|Page

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were several distinguishing and differentiating features. Umoja denies passing off its Shupavu shoes for Bata’s Toughees shoes and that even if Bata had a right to legal protection in respect of the Toughees alleged distinctive design, having allegedly started manufacturing, distributing and selling the Toughees shoes in 2002, Bata was not enjoying and could not enjoy any legal protection in respect of the alleged distinctive design in 2017 as the statutory protection for industrial designs which is fifteen (15) years, had lapsed. That in any event, Bata could not claim protection in respect of a design which was already registered in favour of another company. 3. The matter was set down for hearing where Bata presented two witnesses; Its Legal Manager, PRISCA WAMBUI CHEGE (PW 1) and BONIFACE NGAHU, a Marketing Research Consultant at SBO Training & Research Limited (PW 2). PW1 adopted her witness statement dated 25th October 2019 and produced Bata’s Bundle of Documents dated 25th October 2019(PExhibit 1-7). The documents contain Bata’s License Agreements, Sample Photos of Bata’s shoes embodying the distinctive design shape branded “Toughees”, a Summary of the annual sales volumes of Bata’s shoes, Copies of randomly selected invoices and delivery notes showing Bata’s sales, a Summary of the annual expenditures incurred on the 3|Page

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promotion and advertisement of Bata’s shoes, 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. PW1 also produced sample Bata’s “Toughees” branded shoes (PExhibit 8), Umoja’s “Shupavu” branded shoes (PExhibit 9) and Umoja’s “Studeez” branded shoes (PExhibit 10). PW2 produced SBO’s Report dated July 2021 (PExhibit 11). 4. Umoja called two witnesses; WANGECHI CHEGE, a Project Manager at Consumer Insight – a market research company (DW1) who relied on her and its director, JINAL SHAH (DW 2). DW1 produced Consumer Insight’s report in Umoja’s Supplementary Bundle of Documents dated 10th November 2022 (DExhibit 1) whereas DW2 produced the Bundle of Documents dated 21st June 2019(DExhibit 2 – 23). The same includes the Proforma invoice dated 25th November 2014, Import Declaration Form dated 6th February 2015, Bill of Lading dated 7th April 2015,Import Entry Form dated 22nd May 2015, Purchase Order dated 14th October 2015, Registration Certificate from the Kenya Bureau of Standards(KEBS) dated 29th March 2016, Extracts from Facebook and Twitter publicizing launch of Shupavu shoes, Copies of Invoices and Delivery Notes, Letter dated 16th January 2017 from Umoja to DIPESHI BHIKULAL KHETIA, Copy of 4|Page

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statement by DIPESHI BHIKULAL KHETIA, Kenya Industrial Property Institute Journal No. 2016/8 dated 31st August 2016, copy of letter dated 24th January 2017 from Umoja to Bata, copy of letter dated 3rd February 2017 from Bata to Umoja, copy of letter dated 17th February 2017 from Umoja to Bata, copy of letter dated 9 th March 2017 from Umoja to Bata, copy of letter from Bata to Umoja dated 24th March 2017, copy of application filed in Expungement Proceedings, copy of the Industrial Property Journal 2017/12 dated 31st December 2017, photographic representation of shoes manufactured by Bantu Shoes “Bantu” photographic representation of shoes manufactured by Reddamac Leather Center “Reva Shoes”, photographic representation of shoes manufactured by Worldboots Limited and photographic representation of shoes manufactured by Addison Industries Limited. 5. After the hearing, the parties were directed to file written submissions which are now on record and which together with the pleadings and evidence, I have considered and I will be making relevant references to them in my analysis and determination below. Analysis and Determination 5|Page

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6. Noting that the present proceedings are civil in nature, it is not lost that the court’s determination of this matter is on a balance of probabilities and is guided by the principle that he who alleges must prove. Denning J., in Miller v Minister Of Pensions [1947]2 All ER 372 discussed the burden of proof and he stated as follows: “That degree is well settled. It must carry a reasonable degree of probability, but not so high as is required in a criminal case. If the evidence is such that the tribunal can say: ‘we think it more probable than not’, the burden is discharged, but, if the probabilities are equal, it is not. Thus, proof on a balance or preponderance of probabilities means a win, however narrow. A draw is not enough. So, in any case in which the tribunal cannot decide one way or the other which evidence to accept, where both parties’ explanations are equally (un) convincing, the party bearing the burden of proof will lose, because the requisite standard will not have been attained.” 7. The aforementioned position has now been espoused by our superior courts and finds statutory comfort in sections 107 and 108 of the Evidence Act(Chapter 8. 80 of the Laws of Kenya) which provide as follows: 107. Burden of proof. 6|Page

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(1) Whoever desires any court to give judgment as to any legal right or liability dependent on the existence of facts which he asserts must prove that those facts exist. (2) When a person is bound to prove the existence of any fact it is said that the burden of proof lies on that person. 108. Incidence of burden. The burden of proof in a suit or proceeding lies on that person who would fail if no evidence at all were given on either side. (Also see Ignatius Makau Mutisya v Reuben Musyoki Muli [2015] KECA 612 (KLR) 9. The parties submit that they filed an agreed statement of issues dated 28th March 2024 and they urge the court to determine the following issues: i. Whether Bata’s shoes, characterized by special, distinct and unique shape, pattern and design features extensively manufactured, sold and advertised under the trademark “Toughees” have acquired significant goodwill and reputation among the Kenyan public over the past 15 years ii. Whether the “Shupavu” branded shoes that are marketed, distributed and sold by Umoja are identical and/or confusingly similar to the distinctive design and shape of Bata’s “Toughees” shoes 7|Page

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iii. Whether Umoja is passing off its “Shupavu” branded shoes as being those of or in some way related to or associated with Bata’s “Toughees” shoes iv. Whether Bata are entitled to the remedies sought in the plaint v. Which party should pay the costs of suit? Whether Bata’s Toughees have acquired goodwill 10. Bata submits that the school shoes embodying the distinctive design shape under the trade mark “TOUGHEES” have acquired significant goodwill and reputation among the Kenyan public as a result of the extensive manufacturing, distribution, sale and advertising conducted by Bata. Bata submits that it was not rebutted that it has been manufacturing, distributing and selling the Toughees shoes for the past 15 years, that it produced photographs showing the distinctive design shape manufactured and sold by Bata and that this design has become associated with Bata’s Toughees shoes. Further, that it produced evidence showing that it sold over 1 million pairs of Toughees shoes each year from 2010 to 2016 and that it is only in 2017, after Umoja started distributing and selling its “SHUPAVU” branded shoe, that the number of pairs dropped below 1 million to 807,296 pairs. Bata submits that it also incurred significant expense over the years carrying out extensive advertising and promotional activities of the 8|Page

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“TOUGHEES” shoes in the print and electronic media. That DW1’s report also confirms that Bata’s Toughees have acquired significant goodwill and reputation among the Kenyan public. 11. In response, Umoja submits that Bata did not have goodwill and a reputation in respect of the alleged special, distinct, unique pattern and design of its shoes. It contends that the design and shape of the Toughees shoe was not special, distinct and unique for the reason that the design, shape, configuration, pattern and features has been embodied in the school shoes sector, and in the school shoes manufactured by several other manufacturers for a period of over the fifteen years. That Umoja also shared with the Court samples of soles produced by C&P Shoe Industries Ltd confirming the foregoing and that clearly, Bata do not have a monopoly on the shape and design of the Toughees shoes. Further, that a review of its evidence shows that this design was registered to C&P Shoe Industries Limited on 28th September 2001, even before Bata allegedly started using it in making its shoes in the year 2002 which again confirms that the design and shape of the Toughees shoe was not special, distinct and unique as alleged or at all. 12. What is goodwill and how is it to be proved? This question was asked by Tuiyott J.,(as he was then) in Mjengo Limited v Manji Food Industries Limited [2020] KEHC 2349 (KLR) and he 9|Page

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found an answer in Commissioner of Inland Revenue v Muller & Co. Margarine Ltd [1901] AC 217; [1900-1903] All ER 413, where Lord Macnaghten gave a definition of goodwill as follows: “What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old established business from a business at its first start. The goodwill of a business must emanate from a particular centre or source. However widely extended or diffused its influence may be, goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the source from which it emanates.” 13. The question of whether a party has established goodwill is subjective and is dependent on the evidence on record and on a balance of probabilities. What is not in doubt is that Bata’s Toughees have been manufactured and sold for over 15 years and that they have been doing so earlier than Umoja’s Shupavu or Studeez. Bata has shared statistics of its volumes of sales which show significant numbers over the years and are indicative of brand awareness and loyalty. Umoja’s Consumer Insight’s Report admit that in a blind test, many consumers identify shoes as Bata’s 10 | P a g e

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Toughees and that Bata’s Toughees is a much more favourite brand among consumers. Bata has also adduced evidence that effort has been expended in marketing, advertising and promoting its Toughees brand. In my view, the aforementioned are sufficient to demonstrate that Bata has acquired goodwill for its Toughees shoes over the Kenyan public for the last 15 years. 14. However, I find that this acquisition of goodwill is not brought about by any special, distinct or unique features, shape or design of the shoe but rather, its brand name, Toughees. Umoja has been able to rebut and demonstrate that the said design has been in use by companies other than Bata and were registered and manufactured by those companies before Bata begun manufacturing. Umoja’s report indicated that other than the material and outsole of the shoes, members of the public could generally tell the difference between Bata’s Toughees and Umoja’s Shupavu. Bata’s Report also admitted that members of the public could tell the difference between the packaging of the two products and that there was generally no confusion as to the same. Therefore, the overall and wholistic get-up of Toughees and Shupavu makes one conclude that they are not similar in design and packaging. In the foregoing, I am unable to find that Bata’s 11 | P a g e

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shape and design is unique and that this is the reason for the goodwill acquired by Bata for their Toughees brand. Confusion of Toughees and Shupavu 15. I have found that from the evidence, the two brands generally do not have the same get up from their design and even if the design and shape are similar, the same is not unique or registered to Bata. Assuming that the two types of shoes were similar, can it be stated that Shupavu have been marketing, distributing and selling their shoes as those of Bata’s Toughees? I think not. First, as I have stated, the two brands have a different get up save for the material and outsole, second, it was not rebutted 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. From the foregoing, I fail to find any confusion that is likely to be caused by Umoja’s continued sale of its Shupavu shoes. There is also no evidence that Umoja has been passing off its shoes 12 | P a g e

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as those of Bata considering that Shupavu never stocks Bata’s shoes and that the former’s shoes are largely purchased at source from their manufacturing plant. 16. My findings above largely dispose of the other issues for determination in the negative. 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 misrepresenting to the public that their shoes are those of Bata. I have also found that the overall and wholistic 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 begun production. Conclusion and Disposition 17. In the upshot, the Plaintiffs’ claim has no merit and it is hereby dismissed with costs to the Defendants. It is so ordered. DATED, SIGNED AND DELIVERED VIRTUALLY AT NAIROBI THIS 28TH DAY OF APRIL 2025 ……………………………….. J.W.W. MONG’ARE JUDGE In the Presence of:1. Mr. Lawson Ondieki for the Plaintiff. 13 | P a g e

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2. Mr. Nyaburi for the Defendant. 3. Amos - Court Assistant 14 | P a g e

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