Bata Brands SA & Bata Shoe Company (Kenya) Limited v Umoja Rubber Products Limited [2018] KEHC 2957 (KLR)

REPUBLIC OF KENYA

IN THE HIGH COURT OF KENYA AT MILIMANI (NAIROBI)

COMMERCIAL AND TAX DIVISION

CIVIL CASE NO.501  OF 2017

BATA BRANDS SA............................................................1ST PLAINTIFF

BATA SHOE COMPANY (KENYA) LIMITED.............2ND PLAINTIFF

VERSUS

UMOJA RUBBER PRODUCTS LIMITED.....................RESPONDENT

RULING

1. The Plaintiffs/Applicants M/s Bata Brands SA and Bata Shoe Company (Kenya) Limited by Notice of Motion dated 20th December 2017 brought pursuant to order 40 rules 1,2,3 and 8; 51 rule 1 of Civil Procedure Rules and Section 3A of the Civil Procedure Act seek the following orders:-

1) This application be certified as urgent and heard on a priority basis.

2) Pending the hearing and determination of this suit, the Defendant be and is hereby restrained until further orders from doing whether by itself, its officers, servants or agents or any of them or otherwise howsoever the following acts or any of them that is to say:

a) Manufacturing, importing, selling, distributing, marketing or promoting shoes or shoe products bearing a shape, configuration, pattern, design features, overall design and general appearance that is of identical or substantially similar shape, configuration, pattern, design features, overall design and general appearance applied or embodied by the shoes manufactured and sold by the 2nd Plaintiff under the trade mark "Toughees".

b) Passing off its shoe or other similar products as those manufactured by the 2nd Plaintiff and particularly but not limited to shoe manufactured and/or marketed by it under the mark ‘SHUPAVU’.

c) Parting with possession, power, custody (other than to the Plaintiffs or their agents) of or in any way altering, defacing or destroying the following articles or any of them:

i) Shoes which are being passed off as the shoes manufactured and sold by the 2nd Plaintiff and particularly but not limited to any shoes manufactured and/or marketed by it under the mark ‘SHUPAVU’.

ii) All documents, files, packaging materials, cartons, mounds, invoices, receipts, articles or equipment relating to the importation, purchase, manufacture, sale or supply of products particularly but not limited to any shoes manufactured and/or marketed by it under the mark ‘SHUPAVU’which are being passed off as the shoes manufactured and sold by the 2nd Plaintiff.

3) The costs of this application be awarded to the Plaintiffs.

2. The application is premised on the grounds on the face of the application:-

1) The  1ST Plaintiff is the designer and owner of school shoes with special distinctive and unique shape, configuration, pattern, design features and appearance (together referred to herein as the “Distinctive Design Shape”) which have extensively been manufactured, sold and promoted under the trade mark “Toughees” over the last 15 years in Kenya.

2) The 2nd Plaintiff is a licensee of the 1st Plaintiff.  It has over the last 15 years manufactured, distributed and sold shoes embodying the Distinctive Design Shape under the trade mark “Toughees” of the 1st Plaintiff.

3) The 1st Plaintiff, as a result of the extensive production, sale and promotion of shoes embodying the Distinctive Design shape over the last 15 years in Kenya bearing its trade mark “Toughees” by the 2nd Plaintiff on its behalf, has under common law acquired recognizable and enforceable intellectual property right of ownership for the Distinctive Design Shape of its popular and well known school shoe.

4) The 2nd Plaintiff first became aware in our about January 2017 that the Defendant was manufacturing, distributing and selling shoes embodying the shape, configuration, pattern, design features and appearance which are identical and/or confusingly substantially similar to the Distinctive Design Shape embodied in the 1st Plaintiff’s shoes which are manufactured and sold in the local market by the 2nd Plaintiff on its behalf under license.

5) The decision by the Defendant to choose to trade specifically in school shoes which embodied, reproduced or are an imitation of the Distinctive Design shape of the 1st Plaintiff’s “Toughees” shoes which have been sold extensively over the last 15 years and used by the school going children in Kenya is clearly motivated by bad faith, dishonesty and was intended by the Defendant to pass off its own version of “new” shoes into the market as the 1st Plaintiff’s genuine shoes embodying its Distinctive Design Shape that has over the years become distinctive and synonymous with the shoes manufactured and sold by the 2nd Plaintiff in Kenya.

6) The use by the Defendant of the 1st Plaintiff’s Distinctive Design Shape in connection with school shoes it manufactures and sells, which shoes are not of the Plaintiffs’ manufacture or merchandise, is calculated to lead to the deception, confusion and the belief on the part of the public that the Defendant’s shoes embodying the offending identical Distinctive Design shape of the 1st Plaintiff are the shoes of or are associated  with the genuine shoes rightly embodying the Distinctive Design Shape manufactured and sold by the 2nd Plaintiff over the last 15 years and known to the public as shoes originating from the 2nd Plaintiff.  This is further calculated to cause shoes not of the 2nd Plaintiff’s manufacture or merchandise but manufactured and sold by the Defendant to be passed off as and for shoes of the 2nd Plaintiff.

7) Unless the Defendant is restrained by injunction from passing off its shoes in the aforesaid manner, the 2nd Plaintiff will continue to suffer irreparable damage and loss.

8) The plaintiffs are willing to give an undertaking as to damages if called upon by this Honourable Court to do so.

3. The application is further supported by supporting affidavit of Priscah Wambui Chege, legal Manager of the 2nd Plaintiff/Applicant in which she has deponed inter-alia; that the 1st Plaintiff/Applicant is the designer and owner of school shoes embodying special, distinctive and unique shape, configuration  pattern; design features and appearance referred to as "Distinctive Design Shape", which have continuously and extensively been manufactured, sold, advertised and promoted in the print and electronic media over last 15 years in Kenya bearing the trade mark "Toughees"; that 2nd Plaintiff/Applicant is licensee of the 1st Plaintiff/Applicant and has over 15 years manufactured, distributed and sold shoes embodying the Distinctive Design Shape under the Trade mark "Toughees" of the 1st Plaintiff (annexed and marked PWC-1 are copies of Licence agreement 5); that the shoes has due to manufacture and distribution of 2nd Plaintiff/Applicant acquired substantial reputation and goodwill and became distinctive and synonymous in the mind of public and customers to denote exclusively the shoes manufactured and sold by the 2nd plaintiff (annexed and marked PWC-3 is a summary of annual sales invoices of the shoes embodying the distinctive design shape and copy of the randomly selected invoices and delivery notes).

4. It is further deponed that due to 2nd Plaintiff/Applicant advertising and promotional activities of the school shoe embodying the Distinctive Design Shape being the trade mark "Toughees" in print and electronic media the shoes has acquired significant goodwill and reputation amongst a reasonable proportion of  the public and consumers with consequence that the customers associate the Distinctive Design shape, when applied to a school shoe, and shoe originating, manufactured and sold by the 2nd plaintiff (see PWC - 4 summary of annual expenditure incurred on promotion and advertisement); that the 1st Plaintiff/Applicant as a result of continuous and extensive production, sale and promotion of the school shoe embodying the Distinctive Design Shape by the 2nd plaintiff over 15 years in Kenya under the trade mark "Toughees" the 1st plaintiff has acquired under common law a valid and enforceable: intellectual property right of ownership of the Distinctive Design Shape of its Popaka and well known "Toughees" brand school shoes in Kenya; that all goodwill and intrinsic commercial valuation that has been built or generated over the last 15 years arising from the extensive production; sale, promotion and advertisement of the school shoe embodying the Distinctive Design shape being the trade mark "Toughees" is the property of the 1st plaintiff.

5. It is further averred that sometimes in January 2017 it came to the knowledge of the 2nd plaintiff that the defendant was manufacturing; distributing and selling "Shupavu" branded school shoes in the market which embodied the particular and identical and/or substantially confusing similar Distinctive Design shape of that embodied in the 1st plaintiff’s school shoes without the authority and consent of the 1st plaintiff (annexed and marked PWC-5 is a sample and photograph of the defendant’s show embodying the offending Distinctive Design shape); that the defendant has blatantly reproduced and slavishly copied the plaintiff’s design elements from the Distinctive Design shape which define and forms part of the 1st plaintiff’s school shoes; that defendant decided not to invent and use a design or shape for its own version of "Shupavu" brand shoes to distinguish it from the Distinctive Design shape embodied in the "Toughees" school shoes of the 1st plaintiff which has already been in the market for 15 years and has proven to be popular and widely used shoes by school children in Kenya so far; is to fraudulently cash in an extensive and considerable goodwill and reputation built by the 1st plaintiff’s shoes over years and was calculated to pass its shoes as the 1st plaintiff’s widely used school shoes that is well known for its  Distinctive Design Shape.

6. It is further deponed that the defendant being a manufacturer and trader in school shoes and other footwear products generally knew or should have known of the prior existence and extensive use of the plaintiff’s popular shoes because of its unique Distinctive Design Shape which has been sold by the 2nd plaintiff continuously in Kenya over the last 15 years and that the "Shupavu" brand shoes are not manufactured by the plaintiffs and are not in any way associated with the plaintiffs.

7. The Applicant’s further avers that if the defendant is not restrained from manufacturing, distributing, selling, promoting or advertising through the social, print or electronic media or in any other way its "Shupavu" branded shoes embodying the offending Distinctive Design Shape then irreparable harm and damage will be done to the 2nd plaintiff trading interest; that the plaintiff are further apprehensive that the defendant will be unable to compensate the 2nd plaintiff for the damage what will have been done in the intervening period until trial of the suit if injunction is not granted against the defendant and further if injunction is not granted the defendant’s activities will be highly detrimental to the plaintiffs and that such detrimental effects will not be compensated by any award of damages.

8. It is further averred that the plaintiffs have, on a balance of probabilities, established a prima facie case with probability of success, and demonstrated in the application and in the affidavit that the plaintiffs will continue to suffer irreparable loss if the defendant continues to manufacture, sell, distribute and/or promote its "Shupavu" branded school shoes embodying the plaintiffs Distinctive Design Shape.

9. The plaintiffs avers further if orders sought are not granted or court does not intervene the plaintiff’s will continue to suffer unimaginable financial loss at the hands of the defendant; they have further confirmed that they are willing to give an undertaking as to damages if called upon by the honourable court.

10. The Defendant is opposed to the application and in doing so relies on a Replying affidavit by Jinal Shah, a director of the Defendant/Respondent, dated 19th January 2018 in which he has deponed interalia; that sometime to mid-2014, the Respondent initiated a new product in the school shoes segment called "Shupavu" and at the time there was no product by any footwear manufacture around with a similar trade name; that the Respondent entered into contract with third parties for the design, manufacture and importation into Kenya of the mounds and equipment to be used in the manufacture of shoes under the trade mark "Shupavu". The mounds and equipment’s were imported into Kenya around April 2015 (see attached copy of bundle of import documentation marked ("JS-1"), leading to launching the product in the Kenyan market in August-September 2015 (attached is extracts of online facebook and Twitter material publishing the launch marked ("JS-2").

11. It is further deponed the Respondent commenced the manufacture, marketing and sale of the shoes products under the trade mark "Shupavu" from November 2015 (attached invoices and Delivery Notes marked JS-3).  It is further averred that on 18th January 2017 one of the Respondent’s distributors at Eldoret was arrested by police on allegations he had breached the Applicant’s intellectual right in the trade mark "Shupavu" and that the Respondent did not own the trade mark (attached is a cop of a statement made by the distributor with a copy of letter dated 16th January 2017 furnished to the distributor marked ("JS-4").The Respondent avers upon investigation it was revealed that the 2nd Applicant had applied for Registration of the trade mark on 9th February 2016 and the application was published on page 41 of the Kenya Industrial property Institute’s Journal November 2016/8 dated 31st August 2016 (attached marked JS-5); that further investigation revealed to date, the Applicant’s have never sold any product in the market with the trade mark "Shupavu".

12. It is further deponed by the Respondent the 2nd Applicant’s rush to register a trade mark in the name of "Shupavu" on 9th February 2016 was solely prompted by the Respondent’s launch of its shoes products with trade mark "Shupavu".  In August 2015 with malicious intention of blocking the Respondent from entering the school shoes market; that the 2nd Applicant rushed to register the trade mark "Shupavu" was in bad faith as it was premised on a false representation made in the Registration Application form that the 2nd Applicant was the proprietor of the trade mark "Shupavu" when the 2nd Applicant was fully aware that the mark did not in fact belong to the 2nd Applicant, but to the Respondent, which had invented the mark; and had prior use of the mark before lodgment of the application for registration by the 2nd Applicant;  therefore acquiring prior common law right to the mark.

13. That following the outcome of the investigation aforesaid, the Respondent issued a cease and deposit letter to the 2nd Applicant (annexed and marked "JS-6" dated 24th January 2017).  That upon receipt of the cease and design letter, the 2nd Applicant instructed its Advocate to write to the Respondent and ask for proof of prior use (attached and marked ("JS-7") is a letter dated 3rd February 2017).  The Respondent through letters dated 17th February 2017 and 9th March 2017, wrote to the 2nd Applicant’s Advocates and furnished the proof requested (attached and marked ("JS-8").  That upon receipt of the letters and documents from the Respondent it is averred that, the 2nd Applicant realized its irregularly registered trade mark "Shupavu" was assailable, and as a bargain chip.  It devolved to issue a cease and deposit letter to the Respondent for allegedly passing-off of its "Shupavu product" as the Applicant’s product manufactured and sold under the trade mark "Toughees" (attached and marked JS-9 a cease and deposit letter served by Applicant’s Advocates).  It is further deponed the Respondent meanwhile, filed an application for Expungement of an Entry in the Register seeking the cancellation and removal of the trade mark "Shupavu" in the name of the 2nd Applicant from the Trade Marks Register (attached and marked "JS-10" a true copy of the Application and Accompanying statement of the case which application is pending hearing and determination). It is averred by the Respondent that it verily believes that the suit herein together with the application before the court is an abuse of the court process, as they are not instituted for genuine vindication of the Applicant’s rights but are for attainment of ulterior motives.

14. The Respondent further avers that it is aware the Applicants claim is in respect of their rights over the shape, configuration, pattern, design features and appearance of the products manufactured, sold and promoted under the trade mark "Toughees".It is further urged that the Applicants are seeking to protect is intellectual property in the form of an industrial design, which the Respondent, avers, is defined "as any composition of lines or colours or any three dimensional form, whether or not associated with lines or colours provided that such composition or form gives a special appearance to a product of industry or handcraft and can serve as a pattern for a product of industry or handcraft".  The Respondent further avers that it is advised by its counsel that the protection offered to industrial designs is only contemplated and conferred by a statute and that any registered industrial designs under the Industrial property Act are capable of receiving any protection in law in Kenya.  It is further averred by the Respondent that it believes the industrial design which is in use by the Applicants is manufacturing, sale and promotion of the Applicants’ shoes products under the trade mark "Toughees" which is not registered and as such enjoys no protection under the Industrial Property Act or any other law whatsoever and anyone is free and at liberty to use it. It is further averred that even if the alleged industrial design was valid under the Industrial Property Act, which the Respondent disputes, the validity period for industrial design is five (5) years and is renewable only twice for similar periods, making the maximum validity period to be  fifteen (15) years.  It is further averred by the Respondent, that it is advised by its counsel that common law cannot confer greater rights than those conferred under statute and as such, the maximum validity period for any industrial design in Kenya is fifteen (15) years.  That in view of the Applicant’s allegation that they have been producing, selling and promoting school shoes under trade mark "Toughees" embodying the industrial design in question over the last fifteen (15) years, the Respondent contents any protection offered to the industrial design has expired and the design has fallen into the public domain.

15. It is further deponed by the Respondent that it is advised by its counsel, that the remedy of passing off is a common law remedy which is only applicable to unregistered trade mark under Trade mark law and is expressly recognized and presented under section 5 of the Trade Marks Act, whereas the industrial property Act makes no such recognition and presentation and urged the remedy of passing-off was never intended to apply to unregistered industrial designs.  It is urged that to the extent that Applicants cause of action is premised on passing-off of an industrial design, and being founded on any known law in Kenya, the Applicant’s suit lacks merit in its entirety.  It is further averred that the Applicants are seeking protection relating to unregistered industrial design and not a trade mark and as such are not premised on a known reasonable cause of action.

16. The Respondent further depones that the design used by the Respondent in its shoe products; manufacture, and sold under the trade mark "Shupavu" is not similar to the design used by the Applicants in the shoe products manufactured and sold by the Applicants under the mark "Toughees" neither is the use of its design calculated to lead to deception, confusion and belief on the part of the public that the Respondent’s shoes are associated with the shoes manufactured and sold by the Applicants.  It is further averred the Respondent’s use of its design in producing the shoe products manufactured and sold under the trade mark "Shupavu" was not intended to pass them off as the Applicants’ shoes manufactured and sold under the trade mark "Toughees".  That it is averred the Applicants have not demonstrated a prima facie case with any probability of success; that the Applicant will not suffer irreparable injury which can’t be compensated  by an award of damages as the substantive reliefs sought in the plaint are damages; and it is also averred the balance of convenience in this matter is in favour of not granting the orders sought as granting the orders will not only interfere with the Respondents’ right to enjoy its common law rights in the trade mark "Shupavu" and will also compromise the ongoing expungement proceedings.  It is further urged the Applicants are guilty of laches as they did not take any steps to protect their design from November 2015 when the Respondent commenced the manufacture and sale of the goods todate.

17. I have in this application captured the contents of the application, affidavit in support and annextures relied upon as well as the contents of the Replying affidavit and annextures thereto. The Plaintiffs/Applicants briefly seek injunctive orders restraining the defendant/Respondent from passing off its design in respect of the "Toughees" shoes pending the hearing and determination of the suit.  It is on the basis of the alleged passing off incident, the plaintiffs seek an order restraining the defendant from passing of its shoes bearing the Instinctive Design embodied in the plaintiff’s "Toughees" shoes.

18. The 2nd Applicant manufactures, promotes, markets and distributes various brands of shoes under licence from the 1st Applicant.  The Applicant further allege that for the last 15 years, the 2nd Applicant has been manufacturing, promoting, marketing, selling and distributing school shoes bearing the Trade Mark "Toughees", which it has also been advertising and carrying promotional activities of the "Toughees" school shoes which embodies a special, distinctive and unique shape, design, configuration, pattern, features and appearance.  The Applicants allege that in January 2017, they became aware of the fact that the Respondent was manufacturing, distributing, selling school shoes branded "Shupavu" which embody a design identical or substantially confusingly similar to that of the Applicants.

19. The Respondent contends it initiated the product called "Shupavu" mid-2014 and proceeded to manufacture and market school shoes bearing the trade mark "Shupavu".  It came to learn that on 9/2/2016 the 2nd Applicant had rushed to register the trade mark "Shupavu" but todate the 2nd Applicant has never sold any product in Kenyan market using that trade mark. The Respondent substantially initiated expungement proceedings.  That the Respondent confirmed trade mark "Toughees"is not registered under the Industrial Property Act.  That Trade mark "Shupavu" in their shoes is clearly distinct and different from the Applicant’s "Toughees"; and there is no possibility of the Respondent’s shoes causing confusion amongst consumers and the likelihood of the Respondent’s shoes being mistaken for those of the Applicants is too remote.  That the design in question is contended does not actually belong to the Applicant but to C & P Shoe Industry Limited which was the registered owner of the design for a period between 28th September 2001 to the year 2016 when the protection given under the Industrial Property Act lapsed and the same fell into public domain.

20. The Respondent/Defendant filed further affidavit dated 11th April 2018 with several annextures averring that it has never deliberately or inadvertently copied; reproduced and applied to its "Shupavu" branded shoes a general appearance, shape, pattern which is identical or is a substantial reproduction or imitation of the exact appearance, design, shape, pattern which is embodied and defined in the Applicant’s "Toughees"branded shoes; that the Respondent further avers that it is aware that school shoes embodying a similar shape, configuration, design, features and appearance to that claimed by the Applicant were being manufactured and sold by C & P shoe industries Limited from 28th September 2001 to the year 2016 who were the registered owner of the said design for a period between 28th September 2001 upto 2016 when the design fell into public use, when the duration of the design issued to C & P shoes Industries Limited lapsed at the end of 15 years protection given by law (annexed copy of the industrial January 2017/12 dated 31/12/2017 marked "JN-1 confirming the design lapsed); that similar shoes design which embodying the shape, configuration, pattern, design, features and appearance of Applicant’s shoe’s has been in Kenyan market which include shoes manufactured and sold under the brand name "Bantu" since 2014 to date (annexed photographic representation of the shoes marked "JN-2") and similar shape, configuration, pattern, design, features and appearance of Applicant’s shoes are manufactured by Reddamc Leather Centre Limited called "Re va" shoes which have been in the market for a long time (annexed a photographic image marked "JN-3) and shoes manufactured by World boots Limited which has been in the market for a long time (annexed the photographic image marked (JN-4"); shoes by Addison Industries similar to those of Applicants, which has been in the market for a long time (annexed and marked JN-4).  It is averred by the Respondent that the school shoes whose images appear in JN-1, 2,3 and 4 bear similar features to those of the Applicant’s alleged design in respect of many aspects including placement of eyelets; upper cutting, placement and stitching of the shoes, insole and inner lining of those are very common in the footwear industry.

21. I have very carefully considered the rival pleadings and rival oral submissions by counsel as well as the written submissions by counsel.  The issue for consideration from the pleadings and submissions can be summed up as follows:

a) Whether the Application meets the threshold for the granting an injunctive orders?

b) Whether the Applicants have demonstrated that they will suffer irreparable injury which would not be adequately compensated by an award of damages?

c) In whose favour does the balance of convenience lie?

A. Whether the Application meets the threshold for the granting an injunctive orders?

22. In determining an application for orders of injunction the court has to bear in mind that the granting of an interim injunction is an exercise of judicial discretion which discretion has to be exercised judicially.  In order to grant orders for injunction in application, the Applicant must demonstrate or show first that it has a prima facie case with a probability of success.  Secondly, an interlocutory injunction will not normally be granted unless the applicant might otherwise suffer irreparable injury which would not adequately be compensated by an award of damages.  Thirdly, if the court is in doubts, it will decide an application on the balance of convenience.

23. In Cut Tobacco Kenya Ltd Vs British American Tobacco (K) Ltd (2001) eKLR it was held:-

"Another correct approach to an application for injunction is that applied by the predecessor of this Court in the case of Giella Vs Cassman Brown & Co. Ltd [1973] EA 358 where Spry VP in the leading Judgment of the Court stated at page 360:

"I will begin by stating briefly the law as I understand it.  First, the granting of an interim injunction is an exercise of judicial discretion and an appellate court will not interfere unless it be shown that the discretion has not been exercised judicially (Sergeant Vs Patel (1949), 16 EACA 63).

The conditions for the grants of an interlocutory injunction are not, I think well settled in East African.  First an applicant must show a prima facie case with a probability of success.  Secondly, an interlocutory injunction will not normally be granted unless the applicant might otherwise suffer irreparable injury which would not adequately be compensated by an award of damages.  Thirdly, if the Court is in doubts, it will decide an application on the balance of convenience." [Emphasis added]

24. The cause of action before this court is a passing off action in respect of an unregistered design.

25. In the case of Maxam Limited & 2 Others Vs. Heneka E.A Import Co. Ltd & 2 Oohers (2006) eKLR, a prima facie case was defined as follows:-

"In the same matter the court further observes that:

"Prima facie case was defined by the Court of Appeal as where an applicant establishes that his legal right has been infringed by a Defendant thereby calling for a rebuttal by the latter."

26. The standard for a prima facie action in passing off was set out in the case of Warnick Vs Townend (1979) AC 73, where it was stated the plaintiffs are required to demonstrate that:-

"There was a misrepresentation by the Defendant;

The misrepresentation was made by a trader inthe course of trade;

The misrepresentation was made to prospectivecustomers of the goods and services supplied bythe Defendant;

The misrepresentation is calculated to injure the business and goodwill of the Plaintiffs (in the sense that this is a reasonably foreseeable consequence);

The misrepresentation causes actual damage to abusiness or goodwill of the Plaintiff by whom theaction is  brought or (in a quia timet action)brought or (in will probably do so."

27. In the instant case, there is no dispute that the Distinctive Design, Shape relied upon by the Applicant and the Respondent none of them is registered.  That being so the unregistered design is not subject of the industrial property Act as the said Act only makes provision for registered designs.  Secondly, the claim before this court is, a claim for passing off and not for infringement.  That in absence of statutory provisions, the protection for unregistered designs, thus the plaintiff’s Distinctive Design Shape is subject to the protection under common law pursuant to section 3(1) (c) of the Judicature Act.

28. In Russel-Claarke in Copyright in Industrial Designs 4th Edition, at pages 86 and 87, in addressing unregistered design right, states that these may be enforced under the law of passing off where it is demonstrated that:-

i) That the appearance of the article to which his design is applied is in some way outstanding and peculiar, and that owing to considerable use, that appearance has come to be associated in the minds of the relevant trade or public with his goods, and therefore to be distinctive of them.

ii) That the use of the goods with the design or a substantially similar design applied to them by the Defendant has caused or would be likely to cause confusion by leading the trade or public to mistake the Defendant’s goods for those of the Plaintiff, or to associate them with him.

29. In the instant suit, the Respondent admits it commenced the manufacture of "Shupavu" shoes mid-2014 and admits "Shupavu" branded shoes is theirs.  The Defendant/Respondent submits as regards the trade mark "Shupavu" it is distinct and different from "Toughees" and pointed that there are shoes with different brand which are similar to the Applicants.  However there is no similarity between those trademarks and as such, customers cannot be confused or mistaken to think that the Respondent’s shoes are those of the Applicants.

30. In the instant case, I have considered the affidavits in support and the annextures thereto.  The Applicants produced their "Toughees"brand shoes as annexture "PWC-2" as per paragraph 4 of the supporting affidavit.  The visual examination of both the Applicants’ and the defendant’s shoes will show that resemblance is so similar and striking that it is likely to deceive or cause confusion in the cause of trade in shoes in such a manner as to render any person buying the shoes to think the Respondent’s shoes are the Applicants’ shoes.

31. In Haria Industries Vs P.J. Products Limited the Court of Appeal held:

"The test is whether an average customer acting with reasonable care would be likely to be confused by the article complained of."

32. I have further noted that the Applicants demonstrated the distinctive features of the Applicants’ shoes as set out under paragraph 10 of the supporting affidavit whereas the Respondent at paragraph 28 of their Replying affidavit and paragraph 3 of the further affidavit made a general denial on the resemblance of its shoes to those of the Applicant.  The Respondent was evasive by failing to make any reference to any features distinguishing its shoes from those of the Applicants.

33. In the case of Hodgkinson & Corby Limited & another Vs. Wards Mobility Services Limited the court held:-

1) At the heart of passing off lies deception or its likelihood deception of the ultimate consumer in particular.  The foundation of the plaintiff’s case must therefore lie in deception.

Reddaway vs. Banham (1896) 13 R.P.C.218 at 224 relied upon.

2) It made no difference whether there was misrepresentation by the use of a trade mark, sign or whether it arose by the very appearance of the goods themselves.

Reddaway vs. Banham (1896) 13 R.P.C. 218 at 224, Singer Manufacturing Co. vs. Loog L.R.18, Ch.D. 395 at 412, Rechitt & Colman Products Ltd vs. Borden Inc. [1990] R.P.C. 341, British American Glass vs. Winton [1962] R.P.C. 230, followed.

3) When the court is concerned with the appearance of the article itself, if the ingredients of passing off are made out, there is no policy exception by way of defence.  The defendant must always do enough to avoid deception to escape liability.

Williams vs. Bronnley (1909) 28 R.P.C. 771, explained.

4) In a passing off action what must be shown is whether the public is "moved to buy by source.”

34. The Respondent relies on annextures JS-1, 2, 3 and 4 in its further affidavit urging that it acquired common law rights of prior use in respect of the trade mark "Shupavu".  The issue here is a passing off and not for infringement of the rights and by the Applicants longstanding as a known shoes manufacturer, the Respondent was well aware of the Applicants design and that it insensibly and intentionally replicated the Distinctive Design Shape to ride on the Applicant’s market and good will built over the past 15 years, and make public into believing its shoes were those of the Applicants.  That action is misrepresentation of the public.

35. In view of the above I am satisfied the Applicants has established a prima facie case with probability of success.

B. Whether the Applicants have demonstrated that they will suffer irreparable injury which would not be adequately compensated by an award of damages?

36. The Applicants urge that in the event the orders sought are not granted, the plaintiff will suffer irreparable damage, losing the goodwill built in the "Toughees" shoes over the last 15 years, which loss cannot be adequately compensated by way of damage.

37. The Plaintiff/Applicant in the plaint dated 20th December 2017 under prayers (a), (b), (c), (d) seeks orders of injunction and award of damages or alternatively an account of profits and an order of payment of sum found due;  where such prayers are sought, damage would be a sufficient remedy as was found in the case of Hoswell Mbugua Njuguna vs Equity Bank Limited [2012] eKLR, where the court expressed itself as follows:-

"One of the prayers sought by the Applicant is that the Respondent be ordered to render and deliver to the court proper accounts of the profits made from the use of the confidential information of the Applicant.  This prayer is in tandem with prayer (b) of the prayers for judgment in which he seeks an inquiry as to damages for breach of confidence.  Indeed, the other three prayers for judgment also seek an account of all the profits made by the Defendant from the use of the confidential information; appointment of a receiver to collect and receive all the profits made by the Respondent from the use of confidential information; and an order for payment of all sums found to be due to the Applicant.  The effect of these prayers is that he Applicant will not suffer irreparable injury as he can adequately be compensated by an award of damages."[Emphasis added]

38. In the instant suit, the plaintiffs are seeking mainly an order of injunction under prayer (a); an order for delivery to the plaintiff of or destruction on oath of all "Shupavu" brand shoes; an order that the defendant discloses names and addresses of all those to whom it has supplied goods; an inquiry as to damages or alternative an account of profits made by the defendant as a result of the aforesaid passing off by the defendant and an order for payment of any sums found due together with interest thereon with costs of the suit.  Having considered all prayers in this suit I am satisfied that if the orders sought in the application are not granted, the Plaintiffs/Applicants will not suffer irreparable injury as the Applicant can adequately be compensated by an award of damages.  Further to the above it is noted that an analysis of "Toughees" sales from the year 2001 to 2017 (annexure) PWC-4) of the affidavit of Priscah Wambui Chege) there has been a general increase of sales over the years, from 204, 994, 318 in the year 2001 to 2,442,031,006 in the year 2016.  The reflection is therefore that the Applicant is not doing badly, and I find no justification in their asserting that they will suffer irreparable damages, loose the goodwill built in "Toughees" shoes over the past 15 years which loss cannot be adequately compensated: the increase in the sales of the Applicants shoes over the period between 2014 and 2016, when the Respondents came to the market clearly demonstrates that the Respondent’s shoes has minimal effect (if any) on the sales of the Applicants shoes.

C. In whose favour does the balance of convenience lie?

39. The Applicants urges that the balance of convenience tilts in favor of the plaintiff who shall be greatly prejudiced by the production of the Respondent’s "Shupavu" shoes urging that the Applicants have given an undertaking.

40. The Applicant has only satisfied the first condition but failed on the second condition as set out in Hoswell Mbugua Njuguna vs Equity Bank Limited (2012) eKLR where the Court held as follows:-

"Consequently, he has not satisfied the second condition for the grant of an injunction.  In view of this finding, the balance of convenience demands that the injunction sought should not be granted."

In view of the fact that the Applicants have not established the second condition, it is my view that, the balance of convenience demands that the injunction ordersought herein should not be granted.

41. Further in the instant case, there is no dispute that the Respondents started advertising; manufacturing, selling and distributing its "Shupavu" branded shoes in the year 2014 and has continued to do so to date.  This suit was filed after 4 years since the Respondent according to the Applicants started violating the Applicant’s rights to their unregistered design.  The delay in filing the suit has not been explained.  I find the Applicants have been indolent and guilty of laches and as such I find their conduct militates against the balance of convenience being titled in their favour.  The period of waiting for 4 years watching all the happenings and doing nothing at all, that time, before seeking relief is unjustified and inordinately too long to move court for orders of injunction.

42. The upshot is that, the Applicants have failed to establish the thresholds for grant of orders of the injunctions sought.  The application for injunction is dismissed.

Each party to bear its own costs.

Dated, signed and delivered at Nairobi this 25th day of October, 2018.

.........................

J .A. MAKAU

JUDGE