The popular outdoor clothing company Dryrobe has been successful in its trade mark infringement claim against its competitor ‘D-robe’ (trading as Caesr Group Limited) in the Intellectual Property Enterprise Court (IPEC). The case, Dryrobe Limited v Caesr Group Limited t/a D-Robe Outdoors, serves as a timely reminder as to the benefit of effectively policing trade mark rights; particularly when the brand concerned has garnered huge popularity and cult status.
Background
Dryrobe was founded in 2010 by surfer and entrepreneur Gideon Bright. The core product offering is a changing robe to be used by surfers, outdoor swimmers and cold water swimmers when drying off. Prized for their warmth and convenience, Dryrobe products garnered huge popularity during the Covid pandemic when many took up new outdoor hobbies during lockdown. Dryrobe are the holders of several registered UK trade mark rights for ‘Dryrobe.’
In March 2022, a competitor (Caesr Group Limited) launched a similar product under the brand ‘D-robe’. Soon after, Dryrobe initiated trade mark infringement proceedings against D-robe, alleging that the use of this brand would cause a likelihood of confusion in the marketplace and take advantage of Dryrobe’s reputation.
Trade mark ‘genericide’ claims
The most interesting facet of this case was the defendant’s argument of ‘genericide.’ Trade mark ‘genericide’ refers to a trade mark that, whilst once legally protected, has lost any such legal protection (due to the inactivity and lack of proactivity by the trade mark owner) and has become a generic term within the trade. One of our previous articles discussed trade mark genericide in depth (see here).
In the present case, D-robe counter-claimed that ‘Dryrobe’ had in fact become a term that was common in the trade (thus succumbing to ‘genericide’); therefore, Dryrobe’s registered trade mark rights were invalidly registered and could not be enforced against them. D-robe argued that Dryrobe had used their brand descriptively from the outset and that ‘Dryrobe’ had simply become a descriptive sub-category within the clothing marketplace.
Nonetheless, D-robe’s ‘genericide’ claim was rejected by the Judge, who concluded that whilst Dryrobe was clearly a ‘household name,’ it did not automatically follow that the brand had succumbed to genericide. The Judge offered ‘Google’ as an example, which is often used colloquially to refer to internet searching, but is still a household name/brand with trade mark significance.
During the trial, Dryrobe had produced evidence to show a ‘rigorously’ implemented strategy to stave off the risk of genericide as early as 2020 that included:
- Regular dialogue with specialist IP attorneys and solicitors.
- A specific budget for trade mark legal expenses and online enforcement.
- Direct communication with third parties who used the term ‘Dryrobe’ and ‘dry robe’ without their consent; educating them as to the trade mark significance of the term.
- Weekly social media and internet ‘sweeps’ to identify potential unauthorised use of ‘Dryrobe’ by third parties.
- Use of the ® symbol next to Dryrobe to clearly communicate the existence of registered trade mark rights to third parties.
- External communications (including specific pages and their website and videos) explaining and communicating the trade mark significance of ‘Dryrobe’ to consumers and competitors; including how the Dryrobe product is superior to competitor products.
As a result of these efforts, the Judge was satisfied that Dryrobe still retained trade mark significance and had not succumbed to ‘genericide.’
The Judge went on to conclude that the use of ‘D-robe’ infringed upon Dryrobe’s registered trade mark rights.
Key Takeaways
The case demonstrates the importance of valuing the protection and enforcement of your brand. Dryrobe successfully staved off the genericide claims by proving the rigorous, proactive steps it had taken to guard its brand name. The court found that these enforcement efforts were key to maintaining the trade mark's significance, particularly given that the brand arguably conveys an allusively descriptive message. Their rigorous brand enforcement efforts are clearly paying dividends.
Likewise, the case confirms that the threshold for proving that a brand has succumbed to genericide is a high one. The mere fact that a brand is a household name, does not mean that it has succumbed to genericide. Even if certain sections of the public use the brand generically, this is not sufficient, and it must be shown that a significant proportion of consumers have come to use the term generically.
Popularity always comes with responsibility and risk; trade mark rights must be monitored and enforced to ensure long term protection. Protecting your brand is an investment in the long-term success of your business. By taking proactive steps to safeguard your intellectual property, you can build a stronger, more resilient brand that thrives in the global marketplace.
