BATA VS UMOJA — THE SHOWDOWN IN SOLES

A Clash of Soles and Statutes: When Trade Marks Meet Industrial Designs

In Kenya, intellectual property (IP) rights, particularly Trade Marks and Industrial Designs, are critical for protecting the unique identity and innovation of businesses. Trade Marks distinguish the brand of one enterprise from another, while Industrial Designs safeguard the aesthetic or functional aspects of a product’s appearance.

The recent High Court decision in Bata Brands SA & another v Umoja Rubber Products Limited [2025] KEHC 5186 (KLR) highlights a common point of confusion in the overlap between Trade Mark rights and Industrial Design protections. This article dives into the intriguing world of intellectual property, unravelling the differences between Trade Marks and Industrial Designs, the legal frameworks governing them, and the importance of registration of the said rights.

Understanding Trade Marks and Industrial Designs

Trade Marks

A Trade Mark, as defined under the Trade Marks Act (Cap 506), is a distinguishing mark such as a word, symbol, design, or combination thereof used to identify the goods or services of a specific entity. Trade Marks can include brand names, logos, and slogans. Registering a Trade Mark with the Kenya Industrial Property Institute (KIPI) grants exclusive ownership and use, making it easier to protect against infringement and prevent competitors from capitalizing on the goodwill of a brand.

To register a mark in Kenya you start by conducting a Trade Mark search to ensure the mark is not already registered. Where the mark is available, you make an application to KIPI with the following prescribed forms:

• TM1 for appointment of an agent;
• TM2 being the Trade Mark application, and
• TM32 (application details).

After submission, KIPI will inspect the application and, if compliant, publish the mark in the Kenya Industrial Property Journal for 60 days to allow for any third-party opposition. If no objections are raised within this period, KIPI will proceed to register the mark and issue a certificate valid for 10 years, which can be renewed.  Infringement of Trade Marks occur where an unauthorized third party uses a similar or identical mark within the same class as the registered Trade Mark.

Industrial Design

Industrial Design is defined in the Industrial Property Act CAP 509 as the overall appearance of a product resulting from one or more visual features of the shape, configuration, pattern or ornamentation of a product. Registration provides legal protection for up to 15 years (an initial five-year term, renewable twice), ensuring that competitors cannot replicate the design without permission. Unlike Trade Marks, which focus on brand identity, Industrial Designs emphasize the visual or functional uniqueness of a product.

To register a design, a search must first be conducted using Form IP 43. Thereafter, an application is submitted to KIPI using Form IP 27. The application must include three documents: a statement of inventorship (if the applicant is not the inventor), a statement of novelty, and a representation of the design. The design is then advertised in the KIPI Journal before it can be officially registered.

The Bata vs. Umoja Case

In December 2017, Bata Brands SA and Bata Shoe Company (Kenya) Limited filed a lawsuit against Umoja Rubber Products Limited, alleging that Umoja’s “Shupavu” school shoes infringed on the Trade Mark of Bata’s iconic “Toughees” school shoes. Bata claimed that Toughees, a brand synonymous with durable school footwear in Kenya, had a unique shape, design, and configuration that Umoja had copied. According to Bata, the similarity between Toughees and Shupavu caused consumer confusion, amounting to “passing off, ” a legal term for misrepresenting goods as those of another brand.

Bata asserted exclusive use of the Toughees Trade Mark for over 15 years presented advertising materials, sales data, photographs, and market studies demonstrating consumer recognition and goodwill associated with the Toughees brand.

In response, Umoja denied any copying, contending that the design in question was not original to Bata. They asserted that similar shoe designs had been in use by other manufacturers prior to Bata’s adoption in 2002. Further, Umoja argued that the relevant Industrial Design for the shoe had originally been registered by C&P Shoe Industries in 2001. Umoja further stated that the “Shupavu” shoes featured different branding, which was distinguishable from Bata’s Toughees brand, thereby eliminating any likelihood of confusion or passing off.

The High Court ruled that Bata failed to provide sufficient evidence to prove that the Toughees design was legally protected or exclusive. Justice Mong’are pointed out that Toughees and Shupavu shoes were not similar enough to cause consumer confusion. The distinct branding, different retail outlets, and consumer awareness of Toughees as a premium brand meant that Umoja was not passing off its shoes as Bata’s. Crucially, the Court highlighted that while the designs may look alike, Bata never held exclusive rights to that design because it was neither unique nor registered under Kenya’s IP law.

Lessons from the Court Ruling

The Bata vs. Umoja case underscores several key lessons for businesses seeking to protect their intellectual property in Kenya:

1. Protection of both rights

The Bata vs Umoja case highlights the necessity of registering both Trade Marks and Industrial Designs with KIPI to fully protect your brand and product. Bata’s failure to provide a certificate of design registration weakened its claim, as unregistered designs receive no statutory protection under the Industrial Property Act. Similarly, unregistered Trade Marks place the burden on the claimant to prove exclusive rights, which could be difficult to substantiate.

• Evidence in IP Disputes.

The ruling demonstrates the importance of registration certificates as evidence in IP disputes. Bata’s reliance on photographs, physical samples and market studies while lacking registered rights, was insufficient to prove exclusivity. On the other hand, Umoja’s evidence of prior use of the design by other manufacturers strengthened its defence.

• Goodwill and Market Presence

While Bata claimed significant goodwill and market presence for Toughees, the Court found that this goodwill did not extend to an exclusive right over the design, especially since similar designs were already in use. Therefore, businesses must protect their goodwill through formal IP registration rather than relying solely on market reputation.

Conclusion

The Bata vs. Umoja case serves as a critical reminder of the importance of securing IP rights through proper registration. Trade Marks and Industrial Designs are powerful tools for protecting brand identity and product innovation, but their enforceability depends on compliance with Kenya’s IP laws. For businesses operating in competitive markets, registering Trade Marks and Industrial Designs with KIPI is not just a legal formality but a strategic necessity to safeguard their market position and avoid costly disputes.

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