In brief:
- Genericism (the process by which a brand name loses its distinctiveness, sometimes called 'genericide') presents significant challenges for those brand owners whose innovative product or service becomes known as a category term.
- Key to avoiding genericism is pro-active brand management. In this case, the claimant, owner of the DRYROBE trade mark, implemented a robust (and "relentless") campaign to maintain the acquired distinctiveness of its mark, including correcting generic use by consumers and third parties through a range of techniques including social media campaigns, and taking legal action where appropriate.
- Dryrobe was, therefore, able to counter arguments of genericism, by proving its mark had acquired distinctive character, and successfully overcame the defendant's invalidity challenge to its mark. It also established trade mark infringement and passing off as a result of the defendant's use of D-ROBE.
- This High Court decision demonstrates that choosing a descriptive name does not necessarily mean having to tolerate competitor confusion. It also emphasises the importance of having a robust strategy to resist genericism challenges.
Background
In 2011, Dryrobe launched a novel changing robe – the first of its kind on the UK market. The oversized nature of the product allows users to change underneath it, whilst simultaneously drying them and retaining warmth. The robe is popular amongst surfers, swimmers and other athletes who take part in water-based activities, as well as amongst those involved in non-sporting activities, such as dog walkers. The robes initially featured the sign DRYROBE ™, which was later changed to DRYROBE ® once trade mark registration was secured. The claimant's business grew exponentially over a short period of time, with the claimant expending significant efforts in marketing its products under the DRYROBE mark. For example, during the 2016, 2022 and 2024 Olympics, DRYROBE robes were the sole robe supplier of Team GB.
Competitors began to enter the UK market in around 2018, and there are now said to be around 200 competitors selling changing robes in the UK. One of these was the defendant, which, in 2022, began selling changing robes under the word and figurative sign "D-ROBE", along with other variations. These robes were less oversized but were designed to perform the function of a changing robe. D-Robe made 967 sales in the first year of trading, increasing to 13,687 over the next two to three years.
Dryrobe brought a claim for trade mark infringement under sections 10(2) and 10(3) Trade Marks Act 1994, also claiming passing off. The defendant counterclaimed, arguing that the DRYROBE marks were invalid due to being descriptive and generic. It also sought partial revocation of the DRYROBE marks alleging they had not been in use for the full scope of goods/services protected.
The court's judgment dealt first with the validity of the marks before considering infringement.
Invalidity
Descriptiveness
The court was first asked to consider the question of distinctiveness and descriptiveness of a mark for what was, at the time, a novel product. The defendant submitted that DRYROBE (both the word and figurative marks) was descriptive, being a robe designed to dry the user. The claimant meanwhile argued that DRYROBE was an invented word, which was at most allusive, and not a term used in ordinary everyday English (citing as examples of other marks found not to be wholly descriptive, BABY-DRY for nappies and VETSURE for pet insurance).
The court concluded that DRYROBE was not descriptive of all of the goods/services covered by the specification of the marks, in particular bags and hats. However, it did describe the remainder of the goods such as changing robes, beach wraps and waterproof clothing, going beyond mere allusiveness.
Generic nature
The main thrust of the defendant's invalidity argument was that DRYROBE was generic in that it was the 'category term' for changing robes. The evidence showed minimal generic use before June 2019, but that this did increase after that date, albeit on a relatively small scale. Further, the court highlighted that the claimant had proactively taken steps to correct subsequent instances of generic use by implementing a rigorous brand protection and enforcement strategy. This included: sharing numerous DRYROBE vs generic changing robe videos and posts on its social media platforms; using the ® logo frequently (and posting a section on its website explaining how to use the term DRYROBE); communicating with social media users and third-party publications to ask them informally to remove any reference to DRYROBE when used in a generic sense; and taking legal action where informal contact did not resolve the issue.
This "relentless" task of addressing generic use clearly persuaded the judge, HHJ Melissa Clarke, that DRYROBE was recognised and understood as a brand name by consumers at the relevant date, rather than as a generic term. In particular, simply because a section of the relevant public used a mark generically did not mean that it had become so customary that it was incapable of functioning as a trade mark. For example, the judge gave the example that many members of the general public use 'google' generically but that did not mean a significant proportion of those that did so were not fully aware that Google was a brand name.
Acquired distinctiveness
The court was satisfied that the marks had acquired distinctiveness by the relevant date (of the invalidity counterclaim in November 2024), on the basis of the high volume of sales, the claimant's strong market position, extensive media coverage of DRYROBE as a brand, significant marketing spend (including for example high profile commercial relationships with Team GB and Red Bull), widespread press coverage, and consumer evidence that the mark was understood as a brand identifier. The court also took into consideration evidence of actual confusion by consumers (which was explicable only if DRYROBE was understood by those consumers as a brand).
This all amounted to compelling evidence that a significant proportion of the general public identified the goods as originating from the claimant because of its marks, and that the marks had acquired a medium level of distinctive character.
Meanwhile, whilst DRYROBE had become a household name, and there was significant evidence of it being used as a category term by the general public, it was still able to perform its essential function by November 2024 and had not therefore become generic.
Infringement
The judge found medium to high similarity between DRYROBE and D-ROBE. Assessing the likelihood of confusion, the court noted that the fact that the mark was descriptive weighed heavily against such a finding. However, having chosen a descriptive name for a novel product did not mean that the claimant had to put up with a degree of confusion. The significant evidence of actual confusion confirmed beyond doubt for the judge that there was a risk of confusion. The court rejected the defendant's explanation that any instances of confusion only arose "from busy or inattentive people", in light of the claimant's extensive evidence including numerous examples of customers trying to return D-ROBEs to the claimant or applying D-ROBE discount codes mistakenly, believing that the D-ROBEs originated from the claimant.
A finding of infringement under section 10(3) TMA, and also of passing off, followed as a result of finding infringement under section 10(2) TMA.
Additional damages
As is usual in an IP case, there will be a separate hearing to assess the quantum of any financial compensation payable by the defendant. However, the court also decided it was appropriate to award additional damages (to be assessed at a later date by reference to any actual prejudice suffered) under the IP Enforcement Regulations on the basis of knowing infringement by the defendant. The court concluded that the defendant knew or had reasonable grounds to know that it was engaged in infringing activity from at least September 2023 when confused customers began getting in touch (by which time, the claimant had put it on notice, having written to the defendant in April 2022).
Conclusion
Whilst brand owners should aim to choose distinctive marks, adopting a more descriptive name does not necessarily prevent them from enforcing their rights. The case demonstrates, however, the significant proactive steps that trade mark owners should take in terms of active monitoring and action against problematic uses of their brand, not just instances of infringement but also examples of generic use, documenting each instance and the steps taken as it arises.