Kenya High Court Dismisses Bata’s Toughees Trademark Infringement Suit

Bata Brands SA and Bata Shoe Company (Kenya) Ltd have suffered a major legal blow as the Kenya High Court has dismissed their trademark infringement suit against Umoja Rubber Products Ltd over the ‘Toughees’ school shoe brand.

Justice Josephine Mong’are ruled that Bata failed to prove claims of passing off and consumer confusion between its popular Toughees brand and Umoja’s competing line of school shoes branded as Shupavu.

No Confusion Found

At the heart of the matter was Bata’s argument that Umoja had copied the design of its school shoes and was deceiving consumers and benefiting from Bata’s brand equity. But the court didn’t buy it.

“The overall and holistic get-up of the two brands of shoes are not similar,” Justice Mong’are said, adding that Bata’s design was not distinctive or unique enough to warrant exclusive protection.

The judge noted that the two shoe brands were sold in different retail outlets and there was no evidence that Umoja had misrepresented its shoes as Bata’s or confused customers.

The Battle: Design Ownership

Bata filed the case in December 2017 claiming that its Toughees shoes had been in the market for over 15 years and had a unique design. The company alleged that Shupavu shoes were a copy of the design and caused a drop in Bata’s sales—from one million pairs annually (2010–2016) to 807,296 pairs in 2017 when Shupavu entered the market.

Umoja presented evidence that the contested design was registered in 2001 by C&P Shoe Industries Ltd before Bata even used the design. This killed Bata’s originality claim.

Court Dismisses Bata’s Damages and Injunction

Bata had asked for an injunction to stop Umoja from manufacturing similar shoes and damages for market confusion and loss of goodwill. But the court found no basis for that.> “No relief for Bata as they have not proved that Umoja has been passing off its shoes as Bata’s,” said the judge.

The court agreed with Umoja that Bata’s own market research showed that customers are aware of Toughees and therefore would not be confused by Shupavu shoes.

Industry Implications

This is a significant ruling in intellectual property cases in Kenya’s footwear and manufacturing sectors. It shows that distinctive design protection requires proper registration and that market dominance is not enough to block competition.

It also confirms that generic product shapes and designs, even if associated with a brand, do not automatically confer exclusivity—especially if those designs are in the public domain or already registered by someone else.