Background
In 2011, Dryrobe Ltd introduced the first drying and waterproof changing robe in the UK sold under the "DRYROBE" brand. It registered the first DRYROBE UK trademark in 2013.
Dryrobe's business grew significantly and rapidly. Until around 2018, it was the only retailer offering the changing robes in the UK market. It now faces competition from an estimated 200 rival brands.
Dryrobe brought trademark infringement and passing off proceedings against Caesr Group Limited (trading as D‑Robe Outdoors) over the use of the sign D-ROBE to sell its changing robes.
D-Robe counterclaimed for invalidity and revocation arguing that Dryrobe's marks were or had become generic and were descriptive, thus making them void under the Trade Marks Act 1994 (“the Act”).
Descriptiveness and distinctiveness
The court accepted that DRYROBE was a portmanteau of the words "DRY" and "ROBE", but concluded that the mark was not descriptive of all the goods and services covered by the trade mark registrations, such as bags and hats.
The court took a different view in relation to DRYROBE’s registration in other classes, including “Changing robes”, “beach wraps” and even “Clothing”. Here, the court concluded the marks were descriptive as:
- “DRY” and “ROBE” are descriptive of at least one characteristic of the goods;
- the term goes beyond allusiveness (contrasting with VETSURE);
- it is irrelevant how commercially significant the characteristic is;
- it is sufficient that at least one of its possible meanings designates a characteristic of the goods; and
- it is irrelevant the goods could be described in a different way.
However, the judge held that the marks had acquired distinctive character through use, saving them from invalidation under s3(1). It relied on:
- D-Robe's acceptance that Dryrobe was “the biggest player in the [UK changing robe] market in 2024”;
- the substantial sales volumes (approximately 750,000 orders between 2017 and 2024) and the visibility of the large DRYROBE logo, which acted as a “walking billboard”;
- high‑profile commercial partnerships, including with Team GB and Red Bull;
- significant and increasing marketing expenditure (nearly £3 million in 2024); and
- numerous examples of actual confusion by customers which were considered explicable only if DRYROBE is understood by those consumers to be a brand.
Genericism
Under s46(1)(c) of the Act, a trademark can be revoked if the mark has become synonymous with the type of product, so that it is no longer distinctive and cannot function as an indication of origin. D-Robe argued that the term DRYROBE had become a descriptive and generic term, signifying a category of goods to consumers rather than a brand.
The court accepted that, given the descriptive nature of the mark, a heavy burden rested on Dryrobe to prevent it becoming generic. The court found that whilst DRYROBE had become a household name used in place of "changing robe", at the relevant date a significant portion of people still recognised it as a brand name.
The court placed significant weight on Dryrobe's “rigorous implementation of its policies to combat genericism”. These measures included systematic policing of social media, where the Claimant routinely corrected generic uses of “dryrobe”, emphasising that DRYROBE is a brand, while “change robe” is the appropriate descriptor. Dryrobe also instructed a PR agency to monitor third‑party publications, deployed internet‑crawler technology to identify improper usage across online platforms and committed a dedicated budget to legal advice and brand‑protection activity.
Notably, the Judge stressed that even if DRYROBE had become generic by the relevant date, any such genericism could not be attributed to Dryrobe’s acts or omissions because of its sustained enforcement efforts. Consequently, the requirement under s46(1)(c) would not have been satisfied.
The court also emphasised that a mark does not lose its ability to function as an indicator of origin simply because some members of the public use the mark as a generic term. The judge drew an analogy with the verb to ‘google’, which is often used to denote conducting an online search, but noted that this does not prevent a significant proportion of the public from recognising Google as a mark of origin for the brand.
Infringement of the trademark
The judge found a medium‑high level of similarity between DRYROBE and D‑ROBE, supported by evidence of actual consumer confusion, and therefore found infringement under s10(2) of the Act.
The Claimant also succeeded in its claim for passing off and infringement under s10(3) of the Act. The mark had acquired a UK reputation, and the use of D‑ROBE took both unfair advantage of that reputation and caused detriment to the mark’s distinctive character
What actions should a brand take to protect its marks from genericism?
- Develop and maintain a clear anti‑genericism strategy across all platforms including social media, advertising channels, online marketplaces, and press coverage.
- Record every enforcement action such as corrections, takedown requests and PR interventions consistently throughout the lifecycle of the mark.
- Promote proper category terms so that consumers have a non‑proprietary alternative. This reduces pressure on the brand name becoming the default word for the product.
- Ensure high‑volume, visible use of the mark as a brand. For example, Dryrobe’s large logo on the back of garments, strong sales, and wide media exposure helped reinforce that DRYROBE signified a source of origin.
- Maintain consistency in brand identity. While the judge accepted Dryrobe’s occasional variation (“dryrobe” vs “Dryrobe”), a uniform presentation reduces the risk of genericism.
