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What’s in a shape? Lessons from Bata, Umoja trademark row
In Kenya, industrial design rights are protected under the Industrial Property Act, 2001, which focuses exclusively on the ornamental appearance of objects.
In a historic decision, the High Court recently dismissed a suit filed by Bata Brands SA and Bata Shoe Company (Kenya) Limited, who had accused Umoja Rubber Products of copying the design of their popular 'Toughees' school shoes.
The Commercial Court at Milimani found that Bata had failed to prove that Umoja’s Shupavu school shoes bore a sufficient resemblance to amount to infringement or passing off.
The suit, filed in 2017, saw Bata claim exclusive rights over the 'Toughees' trademark design, arguing that the product had gained significant goodwill in the Kenyan market.
Bata asserted that it had developed a unique shoe design — in shape, pattern, and appearance — over the previous 15 years, and submitted consumer insight data showing a drop in sales from one million pairs annually to 800,000 after Umoja began marketing its competing Shupavu line.
In response, Umoja contended that the design in question was neither original nor proprietary to Bata. It argued that similar school shoe designs had long been used by various manufacturers, and therefore could not be claimed as exclusive to any one brand.
While the case initially seemed to revolve around trademark infringement, it ultimately centred on a different but related area of intellectual property law: industrial design.
Although trademarks are among the most visible forms of industrial property, the two are legally distinct — trademarks protect brand identity, while industrial designs protect the ornamental or aesthetic aspects of a product.
Industrial design concerns the visual appeal of a product — its shape, configuration, patterns, lines, or colours — and how these contribute to both functionality and consumer appeal. It applies to a wide variety of products, from furniture and household items to electronic devices, packaging, jewellery, and even digital user interfaces.
Famous examples of industrial design include the 1950s Vespa scooter, the classic Volkswagen Beetle, Coca-Cola’s contoured bottle, and Apple’s sleek iMac, iPhone, and iPad. These products demonstrate how design contributes to both usability and commercial success.
In Kenya, industrial design rights are protected under the Industrial Property Act, 2001, which focuses exclusively on the ornamental appearance of objects.
For a design to qualify for protection, it must be new and original — meaning it has not been disclosed to the public before the registration date, and is significantly different from existing designs.
Industrial design protection is typically granted for a limited period — often 10 years, sometimes renewable — and offers a range of business benefits. It grants the holder exclusive rights to prevent others from commercially exploiting or copying the design. It can also serve as a valuable branding tool, a source of licensing revenue, and an incentive for continued innovation.
For businesses — particularly small and medium-sized enterprises — protecting industrial designs should be a key part of their intellectual property strategy.
As the Bata-Umoja ruling illustrates, relying solely on goodwill and market recognition is not enough. Without proper registration and protection of design rights, enforcing exclusivity in court can be difficult.
