The case all marketing teams should read - Dryrobe v Caesr Group

What has happened?

• The High Court (IPEC) has held that the use of the sign D-Robe for clothing and similar items by the defendant amounts to infringement and passing off of the claimant's DRYROBE UK trade marks, registered for clothing and similar goods. There was a likelihood of confusion and damage to reputation. 

• The case contains useful guidance for legal and marketing teams on a variety of issues, including the potential difficulties of protecting and enforcing descriptive marks as well as how to avoid marks becoming generic. 

• The defendant had raised two counter-claims: that the Claimant's DRYROBE registrations were invalid for lack of distinctiveness and/or should be revoked as they had become the common name in the trade (generic) for the goods covered. Both counter-claims were ultimately unsuccessful but the case illustrates the extent to which Claimants must go to fend off such claims where their marks are descriptive.

• The decision confirms that the owners of highly descriptive marks bear a heavier burden to take steps to prevent those marks from becoming generic than the owners of inherently distinctive marks. However, the mere fact that a section of the relevant public uses a mark generically in the relevant period does not mean that it has become generic and is incapable of functioning as a trade mark. While there is no new law here, the decision provides useful guidance on 'genericide' and how brand owners can combat it. 

• The fact that the DRYROBE mark was descriptive also impacted the infringement analysis, with the judge effectively concluding that there was only a likelihood of confusion in this case because the "DRY" AND "D-" elements are visually and aurally closely similar and the DRYROBE marks had acquired distinctiveness through use. The Claimant did not have a monopoly in the word 'Robe'. 

• Among the other areas of interest in the judgment is the acceptance of evidence of actual confusion, with the court applying the more sensible (and brand owner-friendly) approach to analysing such evidence applied by the Court of Appeal in the Vetsure case. There was also evidence of actual wrong-way round confusion in the defendant's disclosure.

Want to know more?

Genericide

Under s.46(1)(a), a registration may be revoked where "…in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered…". Previously, registrations for ESCALATOR, THERMOS and ASPIRIN have been revoked under this provision. Conversely, registrations for HOOVER and SPAM were maintained since the marks were held to function as trade marks despite some degree of generic use. Decisions on 'genericide' are rare and always attract attention.

In the DRYROBE case, the proprietor had obtained legal advice in 2017 and undertaken a considerable amount of work to try to prevent the mark becoming generic. It was therefore able to fend off the counter-claim for revocation. Key issues discussed include:

• The mere fact that a section of the relevant public uses a mark generically in the relevant period does not mean that it has become generic so that it is incapable of functioning as a trade mark. 

• The judge commented that, "…many (and perhaps most) of the general public in this jurisdiction, use the word “google” generically, as a verb to describe an internet search (including, I am sorry to say, the witnesses, counsel and judge in this case during this trial), but that is not to say that a significant proportion who do so are not fully aware that Google is a brand name and a mark or origin."

• The public are apt to take the name of a novel product as a description rather than a trade mark, particularly where that name is not fancy but is descriptive or laudatory. 

• The descriptive nature of a brand can hasten its slide into genericism. A proprietor who registers a highly descriptive mark bears a heavier burden to take steps to prevent it becoming a common name than one who registers an inherently distinctive mark.

• The activity/inactivity of the proprietor need only be one of the reasons why the mark has become generic.

• Here, the claimant had implemented a comprehensive strategy to combat generic use and to educate the public that DRYROBE was its brand and that 'changing robe' is the category term. This work included (a) weekly sweeps of social media with 'polite' follow up requests to amend posts, (b) use of automated tools to spot infringements and generic uses with appropriate follow ups and escalation, (c) correcting generic uses in the media, (d) educating the public, press, internal and external teams that DRYROBE is a brand and on appropriate uses of it, (e) putting aside a considerable budget for this work, (f) obtaining legal advice and (g) extensive record keeping around this work. Brand owners and marketing teams should consider this aspect of the judgment carefully.

Descriptiveness

The defendant's counter-claim that the claimant's DRYROBE registrations were invalid (for lack of distinctiveness and because they designate the kind, quality or other characteristics of the goods in question) was rejected. Although the mark lacked distinctiveness for some of the goods in question when it was filed, it had acquired distinctiveness as a result of the extensive use made of it by the time the D-Robe product was launched in 2021 (the relevant date for infringement) and by the time the counter-claim for invalidity was filed in 2024 (the relevant date for invalidity). Key issues included:

• At the time of filing, the DRYROBE mark was not descriptive for the goods in class 18 (bags etc) or hats (in Class 25) as it is a portmanteau word which does not describe one or more characteristics of those goods. This is particularly so as only marks which consist exclusively of descriptive words are objectionable.

• However, DRYROBE was descriptive at that date for all of the other items in the claimant's specification including clothing, waterproof clothing, sports clothing, beach clothing, robes, gowns, capes, changing robes and waterproof robes. The mark describes a characteristic of these goods – and it is irrelevant whether that characteristic is commercially significant. While combinations of descriptive words can sometimes be distinctive (as the VETSURE mark was deemed to be by the Court of Appeal), DRYROBE did not fall into that category. This aspect of the decision seems sound except perhaps for the argument that the mark is descriptive of all clothing.

• It is more difficult to establish acquired distinctiveness where the word in question is apt to describe the product. However, in this case, the evidence was 'compelling' that a significant proportion of the general public at the relevant dates had been educated to identify the goods as originating from the Claimant because of the marks. The evidence included extensive marketing campaigns and high sales volumes, as well as campaigns to educate the public that DRYROBE is a brand. Even the defendant had conceded that DRYROBE was "a well-known product" at the time it launched its D-Robe product. 

• Interestingly, the judge concluded that the DRYROBE mark was more distinctive in 2021 than in 2024. This was because the Claimant had capitalised on the opportunities presented by open water swimming and social media during the COVID-19 pandemic in 2020/21. This shows that the distinctiveness (and reputation) of a mark can increase and decrease over time, potentially affecting a claim. (Separately, it's worth noting that the judge's rulings on the level of acquired distinctiveness, enhanced distinctiveness and reputation of the DRYROBE marks don't always appear consistent and might give rise to a possible appeal, although such an appeal seems unlikely to succeed on the facts.) 

Likelihood of confusion

Given the enhanced distinctive character of the DRYROBE mark, the identity of the goods in question and the similarities between the marks, there was a likelihood of direct and indirect confusion (under s.10(2)). There is an interesting discussion of the application of the likelihood of confusion test where the shared element (here, Robe) is descriptive but has nonetheless obtained acquired distinctiveness through use. Summarising the law, the judge held that:

• The fact that an earlier mark is descriptive weighs heavily against a finding of likelihood of confusion.

• Against this must be set any acquired distinctiveness through use of the earlier mark, which gives rise to a greater likelihood of confusion. However, it is also necessary to consider where that acquired distinctiveness lies. Here, it has arisen from the use of the DRYROBE mark as a whole - this does not give the Claimant any monopoly in the use of the word 'Robe' alone.

• It is well understood that if the only similarity between the respective marks is a common element which has low distinctiveness, that points against there being a likelihood of confusion. However, the judge commented that this is not a case where the only similarity between the marks is the word 'Robe'. The DRY and "D-" elements also need to be considered. The assessment must focus on the similarities and differences between these elements.

• Note that the judge does not say that only the "DRY" AND "D-" elements are relevant, but that they should be the focus. The judge was of the view that these elements are so visually and aurally similar that – when considered in the context of the marks as a whole – there is a likelihood of confusion, especially given the acquired distinctiveness of the DRYROBE mark. The judge went on (unnecessarily, perhaps) to talk about how the hyphen in the "D-Robe" mark might also be understood by the average consumer as replacing the "RY" element of the Claimant's mark (despite this not being pleaded or argued by either party), strengthening the likelihood of confusion.

• Although some might argue that the judge overly dissected the marks, it is a useful analysis of the interaction between inherent descriptiveness and acquired distinctiveness when assessing infringement. 

Other issues the judge considered in determining that there was a likelihood of confusion included:

• The evidence of actual confusion supported the judge's finding of a likelihood of confusion. Even the defendant accepted by the end of the trial that evidence of actual confusion existed. The majority of the evidence involved customers of the Defendant seeking to return or exchange D-ROBE branded items to the Claimant or asking the Claimant about their D-Robe order, repairs or discount codes. Some, when informed by the Claimant of their mistake, make their confusion clear. There was similar evidence in the Defendant's disclosure, which showed actual wrong-way confusion (seven occasions that the Defendant was contacted by consumers about the Claimant’s products).

• Some evidence was discounted where it was not clear that the customer was confused or where there was evidence that the customer struggled with online shopping generally. However, the court applied the more sensible (and brand owner-friendly) approach to analysing the evidence of actual confusion set out by the Court of Appeal in the Vetsure case. 

• An allegation that the Claimant had inconstantly redacted some of its evidence of actual confusion was rejected. There were only one or two examples of arguable inconsistencies in the context of a vast amount of evidence. Likewise, the fact that the Claimant had not called a customer as a witness to give evidence as to actual confusion was not surprising given that no more than two witnesses are allowed in IPEC trials. This shows the importance of careful thought about the appropriate forum to bring a claim, including the pros and cons of a limited number of witnesses. 

• The judge rejected the Defendant's argument that the average consumer would understand D-ROBE as conceptually meaning to take off a robe, holding that the correct terminology is to "dis-robe" not "de-robe". This is important because – had the judge accepted that D-Robe and DRYROBE have different conceptual meanings and that those meanings would be immediately grasped by the average consumer - she could have held that there was no likelihood of confusion (based on conceptual counteraction). While the judge's reasoning (around dis-robe and de-robe) seems strained, this is not a case where conceptual counteraction should apply since too much thought is needed (for some, not all) to grasp the meaning of D-Robe. 

Damage to reputation

The parties had agreed that this was a case where – if there was a finding of a likelihood of confusion – there would also be unfair advantage and detriment to distinctiveness under s. 10(3). This aspect of the judgment is therefore fairly short. 

Additional damages

It was held that the defendant knew or had reasonable grounds to know that it was engaged in infringing activity pursuant to Regulation 3 of the IP Enforcement Regulations. It was alerted to the possible issue by a branding expert before launch and had been contacted by the Claimant. Whether or not additional damages are payable will be a matter for assessment of the actual prejudice suffered by the Claimant, if any, at a later date.

What does this mean for you?

• The case is a good example of the difficulties of protecting and enforcing descriptive marks. Here, that descriptiveness contributed not only to the counter-claims for invalidity and revocation, but also impacted the infringement analysis. Had the "D-" element of the Defendant's mark not been so close to the word "DRY" in the Claimant's mark, the outcome of the case might have been very different. 

• However, it also shows that, where consumers have been educated to see a mark as a brand, the registration can be successfully maintained and enforced.

• The decision confirms that the standard advice to brand owners to avoid counter-claims for lack of distinctiveness and genericide works. They should correct generic uses, encourage adoption of alternative terms to describe the product, use the ® and (TM) symbols, never allow their marks to be used as verbs, undertake social media sweeps, take the benefit of automated online enforcement tools, undertake education campaigns and ensure their internal and external teams are aware and on board.