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When Similar Isn’t the Same: Battle of the Shoe Titans! Lessons From the Bata Toughees VS. Umoja Shupavu Dispute

A commentary on Bata Brands SA & another v Umoja Rubber Products Limited [2025] KEHC 5186 (KLR) 

For years, Bata was the undisputed go-to for school shoes, an unspoken rite of passage for every Kenyan child. But if you wore Bata Toughees? Ah, then you weren’t just ready for school, you were elite. Yet today, that legacy is under threat. Bata’s long-standing dominance through Toughees is facing serious competition, and the battlefield is shifting. 

In the heart of Kenya’s competitive school shoe market, two well-known brands, Bata’s Toughees and Umoja’s Shupavu, found themselves in the courtroom, not over sales, but over intellectual property. What unfolded was more than a business rivalry; it was a legal battle over identity, reputation, and the fine line between inspiration and imitation. 

With decades of brand trust on the line and loyal customers caught in the middle, this case raised big questions: Where does competition end and infringement begin? How far can a brand go before it crosses the line?  

The Dispute: When Two Shoes Look Too Much Alike 

Bata, known for its wide reach and decades-long presence in Kenya, alleged that Umoja’s Shupavu shoes were confusingly similar to its Toughees shoes. They argued that: 

  1. Toughees had a distinct and recognizable design.
  2. They had spent over 15 years building a reputation and goodwill for the brand.
  3. And after Umoja entered the market in 2017, their own sales dropped, from over 1 million pairs per year to just above 800,000. 

Bata claimed this was no coincidence. They alleged that Umoja was “passing off” its Shupavu shoes as Toughees, benefiting unfairly from the Toughees brand reputation. 

Enter Umoja Africa: A New Player with a Different Story 

Umoja didn’t deny that their Shupavu shoes entered the market later. But they firmly rejected claims of imitation or deception. 

Their defense was clear: 

  1. The design in question wasn’t unique to Bata. Similar school shoe designs had been used and registered by other manufacturers even before Bata started selling Toughees.
  2. Their shoes were mostly sold directly from Umoja’s manufacturing outlets, meaning customers intentionally sought them out. 
  3. Consumer reports showed that while Toughees remained a popular and preferred brand, most consumers could tell the difference between the two, particularly in packaging, branding, and store experience. 

Umoja argued they had carved out their own space in the market, not by deception or passing off.  

The Court’s Take: Same Market, Different Brand Story 

After hearing both sides, the court made a key distinction: Yes, Bata had goodwill. Yes, it had loyal customers. But that goodwill was tied to the brand name “Toughees”, not to the shoe’s shape or design. 

Here’s what tipped the scale: 

  1. Umoja proved that the design Bata claimed was theirs had actually been used by other companies even before Bata.
  2. Both parties’ reports showed that consumers could tell the two shoes apart, especially from packaging and branding.
  3. Most Shupavu shoes were sold directly from Umoja’s factory, not in retail settings where confusion might occur. 

The final verdict? There was no passing off and no unique design infringement by Umoja. 

Key Takeaways for Businesses 

  1. Brand goodwill is valuable but not absolute. While goodwill reflects the reputation and customer loyalty a brand has earned over time, it doesn’t give blanket protection over all aspects of the business.
  2. Lack of design registration weakens your position.  Even if a product’s look feels iconic or widely associated with a brand, if you haven’t registered the design under industrial design law, others can adopt similar features without legal consequences. 

 

As brands grow and markets evolve, the line between inspiration and imitation will always be tested. But when it comes to protecting what you’ve built, smart IP strategies can make all the difference. 

Protect More Than Just Your Brand Name!  What are your thoughts on this judgment? Do you think the court got it right? Share your views in the comments below!  

 

Authored by: George Laichena, IP Lead MMW Advocates LLP

Edited by: Stella Muraguri, Managing Partner MMW Advocates LLP 

At MMW Advocates LLP, we help businesses safeguard the full value of their intellectual property, from brand reputation to product design. Whether you’re dealing with a potential infringement or need to structure your IP protection strategy from the ground up, our team is here to guide you.  

Have questions about trademarks, copyrights, or IP enforcement?  Reach out to us! 
Email: info@mmw.legal 

Let us help you turn your ideas into protected assets.  

Disclaimer: This content is for informational purposes only and does not constitute legal advice. For guidance specific to your situation, please consult a qualified lawyer.

 

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