Brief Facts
In the matter of Bata Brands SA and Bata Shoe Company (Kenya) Ltd v. Umoja Rubber Products Ltd, the plaintiffs (hereinafter collectively referred to as "Bata") instituted proceedings against the defendant ("Umoja"), alleging the tort of passing off. Bata asserted that Umoja's manufacture and sale of its “Shupavu” school shoes constituted an unlawful imitation of the distinctive design of Bata’s “Toughees” brand, a product which Bata claimed had been in continuous production, marketing, and sale for over 15 years. According to the plaintiffs, the Toughees design had acquired significant goodwill and consumer recognition, rendering it uniquely associated with Bata in the Kenyan market. Consequently, the plaintiffs contended that Umoja’s actions were likely to deceive or cause confusion among consumers.
In its defense, Umoja denied any wrongdoing, contending that the design allegedly appropriated was neither inherently distinctive nor exclusively associated with Bata. Umoja further argued that the design in question was commonplace within the footwear industry and widely used by other manufacturers. Moreover, the defendant maintained that any statutory intellectual property protection pertaining to the design had expired following the lapse of the 15-year protection period stipulated under the applicable design laws.
Issues for determination:
1. Whether Bata’s Toughees shoes had acquired goodwill through a distinctive design.
2. Whether Umoja’s Shupavu shoes were identical or confusingly similar to the Toughees.
3. Whether Umoja was passing off its shoes as Bata’s.
4. Whether Bata was entitled to any legal remedies.
Case Analysis
In addressing the issue of goodwill, the court adopted the classical definition articulated by Lord Macnaghten in Commissioner of Inland Revenue v Muller & Co. Margarine Ltd [1901] AC 217, characterizing goodwill as the “attractive force which brings in custom.” While the court acknowledged that Bata’s “Toughees” brand had developed goodwill through sustained commercial presence in the market, it stressed that such goodwill must be linked to a distinctive characteristic or presentation (get-up) that enables consumers to differentiate the goods of one trader from those of another.
Despite this acknowledgment, the court found that Bata had not demonstrated that the design of its shoes possessed the requisite distinctiveness to serve as the source of goodwill. The evidence presented established that the contested design was not unique to Bata, having been widely adopted by various manufacturers and previously registered by C&P Shoe Industries Ltd. This prior and widespread usage undermined any assertion by Bata of originality or exclusivity in the design. The court reiterated that distinctiveness is a fundamental prerequisite in claims of passing off predicated on product design.
On the claim of passing off, the court applied the well-established tripartite test—requiring proof of (i) goodwill, (ii) misrepresentation, and (iii) resultant damage. While Bata had demonstrated the existence of goodwill in its brand, the court held that it failed to satisfy the latter two elements. Specifically, the court found no evidence of misrepresentation on Umoja’s part, noting that “Shupavu” shoes were sold primarily through Umoja’s own retail channels and were not represented as Bata products. Furthermore, market research conducted by both parties indicated that consumers were generally able to distinguish between the two products based on branding, packaging, and distribution channels.
In conclusion, the court reasoned that, given the absence of a valid or extant design registration and the lack of distinctiveness sufficient to serve as a badge of origin, Bata could not assert exclusive rights to the shoe design under the doctrine of passing off.
Courts determination:
The High Court dismissed the suit with costs to Umoja, finding that Bata had
failed to prove either a unique design or actionable passing off.
Jurisprudential
Contribution
This case reinforces the threshold required to succeed in a passing off claim,
particularly in the context of unregistered designs. It clarifies that goodwill
alone is not sufficient — it must be directly linked to a distinctive feature
that can be proven to mislead the public. The court's nuanced distinction
between brand-driven goodwill and design originality is a key jurisprudential
point. The decision also reiterates that once statutory design protection
lapses, claims based on the distinctiveness of that design must meet a higher
evidentiary bar.
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