Dryrobe Limited v Caesr Group Limited

A descriptive trade mark may retain distinctive character where a significant proportion of the relevant public recognises it as indicating commercial origin. Generic use by some consumers does not alone establish that a mark has become customary or incapable of performing its origin function. The court must assess the evidence globally, including sales, promotion, market position, press coverage, enforcement activity and actual consumer behaviour.

For infringement, similarity is assessed globally and in context. Where the common element is descriptive, attention must focus on the non-common elements and the mark’s acquired distinctiveness. Actual confusion may confirm a likelihood of confusion, including post-sale, indirect and wrong-way confusion. A proprietor’s descriptive mark does not require it to tolerate otherwise actionable confusion.

Dryrobe Limited brought claims for infringement of its DRYROBE trade marks under sections 10(2) and 10(3) of the Trade Marks Act 1994, passing off and additional damages under regulation 3 of the Intellectual Property (Enforcement etc) Regulations 2006. Caesr Group Limited, trading as D-Robe Outdoors, counterclaimed for invalidity and revocation.

The defendant argued that DRYROBE was descriptive, devoid of distinctive character, customary in the language, or generic. It also challenged likelihood of confusion and alleged non-use of parts of the specification of the 428 Mark. The central questions were whether the marks remained valid and distinctive, whether D-ROBE and the Shield Sign caused actionable confusion or took unfair advantage, and whether additional damages were justified.

1. Validity and genericism. The word DRYROBE was descriptive for changing robes, waterproof and windproof robes, towelling robes, beach wraps and specified clothing, but not for bags, hats, beanies or beanie hats. It was not customary or generic at the relevant filing dates. Although generic use increased, a significant proportion of the general public still understood DRYROBE as a brand by November 2024.
2. Acquired distinctive character. The evidence, assessed globally, established acquired distinctive character by November 2024. Relevant matters included extensive sales and advertising, market leadership, prominent use of the mark on the principal product, national press coverage, commercial relationships, active anti-genericism measures and actual confusion. The earlier word marks had medium to high distinctive character by March 2022.
3. Section 10(2). D-ROBE and DRYROBE had medium to high overall similarity, identical goods and a medium to high level of acquired distinctiveness. The hyphen could be perceived as replacing the letters RY. There was a high likelihood of direct or indirect confusion. The Shield Sign had lower similarity, but still created a likelihood of confusion. Actual direct, indirect, post-sale and wrong-way confusion materially confirmed that conclusion.
4. Section 10(3) and passing off. The marks had a reputation when trading began. The defendant’s signs created the requisite link, caused or were likely to cause a change in economic behaviour, and took unfair advantage of the claimant’s marketing efforts without due cause. Goodwill, misrepresentation and damage were also established.
5. Additional damages and non-use. The defendant knew or had reasonable grounds to know of infringement from at least September 2023. Additional damages were left for later assessment. The 428 Mark specification was reduced for goods and related retail services for which genuine use had not been shown. The remaining counterclaims were dismissed.