DRYROBE LTD V CAESR GROUP LTD – A CASE OF DRY ROBES?

Dryrobe Ltd v Caesr Group Ltd [2025] EWHC 3167 (IPEC)

Case Background

The Claimant’s main product is a changing robe, which was the first drying and waterproof changing robe on the UK market. The Claimant’s evidence that this type of outdoor/weatherproof changing robe that it developed and brought to market was entirely novel in the UK at the time was not challenged in cross-examination, and the novelty of the product was accepted in the Defendant’s skeleton argument and oral submissions.

The Claimant company was incorporated in 2013, but some sales had been made under the DRYROBE name since 2011. The Claimant’s unchallenged evidence was that it was the only retailer in the UK of change robes until around 2018 or 2019, when other entrants began to appear on the market, and that there are now around 200 competitor companies selling changing robes on the UK market.

The Defendant was incorporated in 2021 and started trading in March 2022. The primary product was to be a waterproof / water-resistant and practical warm long changing robe similar to the Claimant’s popular Dryrobe Advance product, but smaller in design.

The Relevant Marks

The Claimant sells under its brand name “DRYROBE”. It obtained a number of UK trade marks (both word marks and figurative marks) since 2013 which it says have acquired enhanced distinctive character through their use.

Once incorporated, the Defendant chose the name “D-Robe”, obtained the domain name ‘d-robeoutdoors.com’ and registered this on 6 February 2021. The evidence showed that the Defendant raised a query with one of its graphic designers about whether he considered ‘D-Robe’ in the logo might be too close to the ‘DUNLOP’ mark. He did not think so, saying “For me, DryRobe would be more of a potential issue, as they make the same product… I’ve deliberately steered away from branding that could be confused with them so far in the development.”. Finally, it’s worth noting that in September 2024 the Defendant applied to register the words “D ROBE and “DROBE”, and those applications were opposed by the Claimant.

Claim and Counterclaim

This was a claim for trade mark infringement under sections 10(2) and 10(3) Trade Marks Act 1994 (“TMA”) and passing off. In relation to 10(2) infringement, it should be noted that the Claimant claimed inherent and acquired distinctiveness of their marks. The Claimant also relied on evidence of actual brand confusion amongst consumers which (a) has come to the Claimant’s attention; and (b) which has been disclosed to it by the Defendant during the course of the proceedings.

The Defendant denied trade mark infringement and passing off. It alleged that the trade marks are not inherently distinctive and pleaded that they do not benefit from an enhanced reputation or acquired distinctive character in the UK.The Defendant also argued that there is only a low level of similarity between the marks, but in closing submissions the Defendant accepted there is evidence of actual confusion between the trade marks and the D-ROBE sign with the relevant public.

The Defendant also had a counterclaim in invalidity (ss. 3(1)(b), 3(1)(c) and 3(1)(d) TMA) or alternatively revocation (s. 46(1)(c) TMA). The Defendant pleaded that the terms ‘DRYROBE’ and ‘DRY ROBE’ consist exclusively of signs which may serve to designate the kind, quality, intended purpose and other characteristics of the goods, or alternatively have become customary in the current language. In other words that they are descriptive, generic terms, only capable of signifying to consumers a category of goods, rather than a brand. Finally, the Claimant admitted in the Amended Reply and Defence to Counterclaim non-use for a selection of the goods and services for which the ‘428 Word Mark has been registered.

Invalidity

The Judge first assessed whether DRYROBE lacked distinctiveness or whether it was descriptive for the goods it is used on. The Judge stated that DRYROBE cannot reasonably be considered to be descriptive of the goods for which each of the ‘428 Mark, ‘826 Mark and ‘456 Mark is registered in Class 18 (“Bags”) or in respect of “Hats”, “Beanies” or “Beanie Hats” in Class 25 and the average consumer would not recognise it as descriptive of those goods. The Court decided that the term “dry robe” is perceived by the average consumer as descriptive for some of the claimant’s goods such as changing robes, waterproof and windproof gowns, and beach wraps as one of the ordinary meanings of those words suggest a description of a robe that keeps the user dry.

However, the Court believed its finding of acquired distinctiveness allowed it to refuse invalidating the word mark on grounds of descriptiveness. It found that the Claimant’s changing robe “serves as a walking billboard” and emphasising the investments and efforts made by the claimant in order to (i) make the public perceive the phrase “dryrobe” as a trade mark rather than a descriptive name of the product, and (ii) they prevented the term from becoming generic in relation to such robes by consistently asking users to avoid using “dry robe” when referring to competitors’ products, the Court therefore decided that DRYROBE had acquired a medium level of distinctiveness.

Furthermore, these findings were also used as the basis for establishing DRYROBE’s reputation within the meaning of TMA s. 10(3), and goodwill relevant to the claimant’s passing off claims.

Revocation

The Defendant argued that the DRYROBE Word Mark had become the generic term for changing robes, under s.46(1)(c) of the TMA, such that a previously distinctive trade mark may be revoked where it has become a generic name and ceases to perform its function as an indicator of origin.

While the court accepted that the DRYROBE trade marks were descriptive of some of the goods for which they were registered, Dryrobe had proactively taken steps to protect its marks, including (i) budgeting for legal and online brand protection, (ii) brand protection efforts against third parties who were misusing “dryrobes” and “dry robes”, (iii) social media campaigns advertising Dryrobe’s superior quality, (iv) website guidance on use of the registered trade mark “®” symbol when referring to Dryrobe and (v) a dedicated social media team searching for infringing uses.

However, in relation to specification of the ‘428 Word Mark, which the Claimant had already amended by the time of the judgment, the Judge found no evidence of genuine use in the relevant period of a number of the goods in Class 16 or of Beach Shoes in Class 25, or related services in Class 35. The specification of the ‘428 Word Mark is therefore to be reduced accordingly.

Judgment

The Court first assessed the similarity of the word marks DRYROBE and D-ROBE and held that there exists a (i) high degree of visual similarity, (ii) medium degree of aural similarity, and (iii) medium degree of conceptual similarity between them. Although the finding of a high degree of visual similarity cannot be contested given the evidence demonstrating actual confusion caused by merely replacing the letters ‘R’ and ‘Y’ with a dash (there was evidence that some customers mistook the discount code ‘DROBE10’ to be used on DRYROBE, while it was applicable on D-ROBE).

Regarding the Shield Sign, the Court held that there is a low degree of visual similarity given the predominance of the figurative element on the Shield Sign, and a medium and medium to low levels of aural and conceptual similarity, respectively. Finally, when coupled with the evidence submitted by the claimant demonstrating actual instances of confusion, these similarity assessments led the Court to a finding of trade mark infringement on grounds of s. 10(2) TMA.

Because the Claimant won on s.10(2) infringement, the s.10(3) infringement was dealt with more briefly. The Judge said that although reputation and acquired distinctive character are technically different concepts, she was satisfied that the Trade Marks had a reputation on the date that the Defendant began to trade. Due to the previous findings on similarity and likelihood of confusion, the Judge found there was sufficient evidence to find in the Claimant’s favour on s.10(3) infringement.

Passing off was also found in the Claimant’s favour. The Judge said that the trade which has made the trade marks acquire distinctive character has generated sufficient goodwill. The application of the D-ROBE sign to clothing which lead ordinary purchasers purchasing with ordinary caution to believe that its goods were associated or connected with the Claimant constitutes a misrepresentation, and damage is made out because of the actual change in economic behaviour of consumers found pursuant to s.10(3) TMA infringement.

The Judge considered whether the Defendant knew or had reasonable grounds to know that it was engaged in infringing activity, and if so, whether the Claimant should be entitled to additional damages pursuant to Regulation 3 of the IP Enforcement Regs. Crucially, the Claimant argued that the Defendant knew, or should have known that there were confused customers from September 2023, as that is when examples began to present themselves to the Defendant’s customer services. The Judge therefore found that the Defendant knew or had reasonable grounds to know that it was engaged in infringing activity, for the purposes of Regulation 3 of the IP Enforcement Regs, from at least September 2023 when confused customers were presenting themselves, by which time it knew of the Claimant’s concerns pursuant to letters of April 2022. However, whether or not additional damages are payable is a matter for assessment at a later date of the actual prejudice suffered by the Claimant, if any.

Commentary

It is certainly arguable that a high level of acquired distinctiveness also results in a high degree of reputation. It is therefore worth considering whether it was appropriate for the Court to justify that a medium level of acquired distinctiveness equates a reputation for s.10(3) TMA purposes.

Robust and proactive brand enforcement is very important for brands. This judgment confirms that consistent monitoring for infringing uses by third parties demonstrates to the Courts an intention to encourage distinctiveness of a proprietor’s trade marks. This is particularly important for trade marks which can be seen as descriptive or semi-descriptive. Brand education can help to prevent genericide by informing the relevant trade and public to help ensure consistent use of trade marks.

Judgment date: 4 December 2025
Link to judgment: Dryrobe Ltd v Caesr Group Ltd [2025] EWHC 3167 (IPEC)