If you grew up in Kenya during the 90’s (HI MILLENIALS!) you must have seen or heard of Bata’s ‘toughee’ shoes – the Maybach, the Rolls Royce, of school shoes. Having Bata shoes already meant you were elite, but having Bata Toughees? That was as good as rolling up to your Class 3 classroom with Cuban cigars. You were a deep state individual!

I remember begging my parents to get me toughees when the term would be gearing up to start,  because listen, if you weren’t wearing toughees you just weren’t cool enough. 

And the advertising that accompanied these shoes? Pure genius! Wearing toughees had us feeling like we could play Kati at breaktime and then fight Rhinos at lunch, just because the ads made us believe we could!

So naturally, it was a little disheartening to hear that Bata’s ‘Toughee’ design was in danger, but only from a nostalgic point of view. Legally however, and upon reading through the case summary, one could see the gaps in the arguments presented by Bata in trying to protect their ‘toughee’ shoe design.

Here’s the tea.

Bata shoes sued Umoja Shoes for what they termed as ‘replicating’ and ‘passing off’ their toughee shoe design. Their case was based off of the fact that Umoja’s shoe, known as ‘Shupavu’, was similar to their ‘toughee’ shoes. Bata argued that their design was unique and that by Umoja Shoes having a similar design to their shoes, more specifically the toughee shoe design, the Company had caused Bata decreased sales in this shoe. Numbers revealed that their sales went from 1 Million shoes per year to about 800,000 shoes per year, since Umoja begun selling their ‘Shupavu’ shoe. There was also speak of trademark infringement; that the ‘toughee’ trademark had garnered a lot of goodwill from the Kenyan market and was fondly consumed by the said market. 

Umoja on their side argued that Bata did not own the design of the ‘toughee’ to begin with and that several other shoe companies were already manufacturing the design. They also argued that from a Consumer Insight Report, customers were not confused by which manufacturer was associated with each shoe and more importantly, to buy the allegedly infringing shoe, a customer had to go to an Umoja Shoe Shop to get it, thereby quashing the argument that they were trying to ‘confuse’ Bata’s customers.

They claimed trademark infringement but also claimed industrial design infringement. Legally however, these are completely separate areas of Intellectual Property Law – the law that protects creativity and innovation. To put it simply we need to first understand what a trademark is and how this is different from industrial design. 

Trademark is the law that protects business identities and usually allows businesses or individuals selling goods and/or services to have exclusive commercial use over a name, a logo, symbol or slogan that they use to sell these goods and/or services. Think brand names like Apple, Samsung or Equity – these can all be protected as trademarks.

Then we have industrial design. 

Have you ever stepped into a supermarket to buy water and wondered why all these water companies are all selling water, but all have different bottle shapes? And the more unique or fancy the bottle is, the more money the water likely costs? See as consumers we cannot deny that more often times than not, we purchase products not only for their functionality, but for how they look. Their beauty or their aesthetics. And this is protected by a type of Intellectual Property known as ‘Industrial Design’. Industrial design can protect how a product looks, such that no one else in the country is allowed to use this design, neither can they import any goods into the country that embodies your design. 

For you to get trademark and industrial design protection, the thing you are trying to protect must be registered with the Kenya Industrial Property Institute (KIPI). But here’s the catch, industrial design protection doesn’t last forever, it expires after 15 years (after two consecutive renewals) whereby this design now goes into the public domain, meaning anyone can use it and no one can claim it as their own.

The reason Bata’s case could not hold, therefore, was because Bata was claiming passing off – which in itself is an action which can only be brought up in a trademark infringement claim. At no point did Umoja sell any shoes with the name ‘toughee’. Take note that a shoe cannot be trademarked. The name of a shoe however, can be. 

Secondly, Bata couldn’t claim that the shoe design was theirs for three reasons:

1. Another shoe company had already begun manufacturing shoes that resembled toughees long before Bata launched this shoe:
2. They couldn’t prove that they had registered this industrial design in their favor;
3. Even if they had registered, the time period to enjoy the exclusivity of the design, being 15 years, would have by now expired (they started selling this shoe in 2002 meaning protection lapsed in 2017).

Their arguments therefore, were not legally sound.

What can we learn from this?

1. You need to understand what types of Intellectual Property rights you have over your work as a creative. Understand which rights are in play to allow you to secure them.
2. Don’t just stop at understanding your rights, register what needs to be registered.
3. Keep innovating. Don’t get too comfortable with your designs because remember, protection for these expires. I would hope Bata could come up with a new, cooler, iteration of the shoe and protect it to allow it to get maximum benefit in terms of sales for the next 15 years.

Intellectual property is meant to protect innovators as much as it is intended to promote creation. And as creators, we must act proactively to secure our rights as we continue to innovate.