Underscoring the importance of demonstrating both a prima facie case and the likelihood of suffering irreparable injury when seeking injunctive relief: The Case of Bata Brands SA & another v Umoja Rubber Products Limited [2018] eKLR

The case of Bata Brands SA & Another v Umoja Rubber Products Limited (Commercial Case No. 501 of 2017) was heard in the High Court of Kenya at Milimani (Nairobi) under the Commercial and Tax Division. The ruling was delivered on 25 October 2018 by Justice James Aaron Makau.(Kenya Law, Kenya Law)

Case Background

The plaintiffs, Bata Brands SA and its Kenyan licensee, Bata Shoe Company (Kenya) Limited, alleged that the defendant, Umoja Rubber Products Limited, was manufacturing and selling school shoes branded “Shupavu” that closely resembled their distinctive school shoe design known as “Toughees”. The plaintiffs claimed that their design had been in the market for over 15 years and had acquired significant goodwill and reputation. They argued that the defendant's actions amounted to passing off, as consumers could be misled into believing that the "Shupavu" shoes were associated with or originated from the plaintiffs.(Kenya Law)

Court's Findings

1. Prima Facie Case: The court found that the plaintiffs had established a prima facie case of passing off, noting that the resemblance between the "Toughees" and "Shupavu" shoes was striking and likely to deceive or cause confusion among consumers.(Kenya Law)

2. Irreparable Injury: The court determined that the plaintiffs had not demonstrated that they would suffer irreparable injury that could not be adequately compensated by an award of damages. Despite the plaintiffs' claims of potential loss of goodwill, the court observed that their sales figures had been increasing over the years, suggesting minimal impact from the defendant's actions.(Kenya Law)

3. Balance of Convenience: The court held that the balance of convenience did not favor the plaintiffs. It cited the case of Hoswell Mbugua Njuguna v Equity Bank Limited [2012] eKLR, where the court emphasized that for an injunction to be granted, the applicant must satisfy both the conditions of a prima facie case and the likelihood of suffering irreparable injury. Since the plaintiffs failed to meet the second condition, the court declined to grant the injunction.(Kenya Law, Kenya Law)

Outcome

The court dismissed the plaintiffs' application for an injunction, thereby allowing the defendant to continue manufacturing and selling the "Shupavu" branded shoes. The ruling underscored the importance of demonstrating both a prima facie case and the likelihood of suffering irreparable injury when seeking injunctive relief.(Kenya Law)

For a detailed account of the case, you can refer to the full judgment here: (Kenya Law).