When is a Dryrobe® not a “dryrobe”

Dryrobe’s trade marks held valid and infringed, and not a generic term for a changing robe.

Summary

Dryrobe Limited (“Dryrobe”) is a well-known manufacturer and retailer of outdoor clothing products. Its “hero product” is the Dryrobe Advance, a waterproof changing robe with a towelled lining, designed for surfers and swimmers to change under, whilst drying them. Since 2013, Dryrobe has registered several UK word and logo trade marks, covering a number of goods and services.  

Dryrobe issued trade mark and passing off proceedings against Caesr Group Limited (“Caesr”) for its use of the sign “D-Robe”, for changing robes. Caesr denied infringement and counterclaimed challenging the validity of Dryrobe’s trade marks and seeking to have them revoked. They asserted that the terms DRY ROBE and DRYROBE were descriptive and not inherently distinctive or had become a generic term, used to describe a category of goods, and had lost their ability to function as a trade mark (i.e. a “genericide” argument).

The counterclaims as to the validity of the marks were rejected as it was held that the marks had acquired a medium level of distinctive character and even if a brand name becomes widely known (like Hoover or Velcro), that does not automatically make it generic. Dryrobe actively fought misuse and educated consumers in perceiving DRYROBE as a trade mark, and not as a category of goods, and therefore the trade marks remained valid and enforceable.

Infringement

The parties accepted that the goods at issue were identical and the court held there was a medium to high level of similarity between DRYROBE and D-ROBE giving rise to a likelihood of confusion.

Interestingly, whilst on its face, the Court found DRYROBE to be descriptive of the goods at issue (clothing / robes), it found the term to have acquired an enhanced distinctive character as a result of its use. Accordingly, whilst it accepted Caesr’s submissions that the distinctive character applied to the mark as a whole and did not grant Dryrobe a monopoly in use of the word ‘ROBE’ alone, the Court found that consumers would likely believe that the D-Robe product originated from Dryrobe, or an economically linked undertaking as the hyphen in D-ROBE was likely to be perceived as replacing the letters “RY” in DRYROBE, such that it would be considered a sub-brand of Dryrobe.

Dryrobe also provided multiple examples of direct, indirect and wrong-way confusion evidence, including: (i) customers seeking to return or exchange their D-ROBE product to Dryrobe; (ii) asking Dryrobe about their order or discount codes for a D-ROBE product; and (iii) asking Dryrobe for assistance with repairs of a D-ROBE product. The judge found this “extensive” evidence compelling and confirmed beyond doubt the risk of consumer confusion.

Flowing from the confusion finding, the use of D-ROBE amounted to an unfair advantage as consumers bought the D-Robe believing them to be Dryrobe’s, demonstrating the change in consumer economic behaviour, and exploiting Dryrobe’s marketing efforts. Caesr’s actions also amounted to passing off.

Genericism

Caesr submitted that the trade marks incorporating DRYROBE were descriptive of the goods for which they are registered, had no inherent distinctive character, or alternatively had become a common name for changing robe products. It pointed to a number of examples of so-called generic use of the DRYROBE but they were insufficient because: (i) they were outside of the jurisdiction; and (ii) the term was used generically whilst also recognising that it is a brand name. It was acknowledged that, because of the descriptive nature of the trade marks, Dryrobe had to work hard to combat generic use to maintain its function as a trade mark.

Dryrobe, with assistance from specialist lawyers and PR advisors, put in place a rigorous strategy to address generic use in the press and on social media, including searching, contacting and challenging use of DRYROBE as a category term. The court was also persuaded by Dryrobe’s extensive marketing and advertising spend, its high-profile commercial relationships with organisations such as Red Bull and Team GB, and the very prominent DRYROBE branding on the back of the Dryrobe Advance, which served as a “walking billboard”, every time it is worn. These key points assisted the finding that despite increasing generic use by competitors, DRYROBE did operate as a trade mark i.e. as an indicator of origin, at the relevant time. Consequently, the counterclaim in relation to genericism failed.

Commentary

This decision will be welcomed by brand owners facing issues with genericism. It is a useful reminder that trade marks require regular review and policing to ensure they continue to operate as an indicator of origin, and do not, as a consequence of their success, fall into the trap of becoming a common / category name for a product or service.

Brand owners can prevent genericism by taking proactive steps such as educating consumers, monitoring misuse on social media and taking legal action where required. Where trade marks have a lower level of inherent distinctiveness for a novel product that becomes very popular and well-known, it is even more important to have a robust strategy in place in order to police the use of the trade mark to ensure it does not become a generic term, and therefore vulnerable to revocation.

If you would like to discuss any of the issues raised in this article please contact Emily Roberts, Amy Salter, Holly Webb or another member of the IP team.

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