Dryrobe® v Caesr Group: Why a pro-active brand strategy can be pivotal to the enforcement and protection of intellectual property rights

The Dryrobe Limited v Caesr Group Limited (t/a D-Robe Outdoors) judgment handed down late last year refers to the "relentless efforts" made by Dryrobe® to monitor and police the use of its brand. These efforts were not only crucial to Dryrobe®'s successful infringement claims against D-Robe, but also to its successful defence against counterclaims that Dryrobe®'s trade marks should be invalidated or revoked on the basis that the terms "dryrobe" and "dry robe" had become generic, common names for the product in question (think "aspirin" and "escalator" for previous examples of this). This briefing explores the practical lessons that brand-conscious businesses can learn from the pro-active brand protection strategy implemented by Dryrobe®.

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The background

Dryrobe® had sold outdoor clothing using the "DRYROBE" trade mark since 2013, perhaps most notably an oversized waterproof changing robe with a towelled lining known as the Dryrobe® Advance (which prominently displays the Dryrobe® trade mark across the back). In 2022, D-Robe started selling its own fleece-lined changing robe under the "D-ROBE" name and sign.

Dryrobe® brought claims for trade mark infringement and passing off against D-Robe. As part of its defence, D-Robe raised two counterclaims, namely that Dryrobe®'s registered trade marks should be (i) invalidated on the basis that they were descriptive and lacked the requisite distinctiveness, and/or (ii) revoked on the basis that the trade marks had become the common name in the trade for the product for which they were registered.

Whilst certain brand owners might like the idea of their brand name becoming so reputable that it becomes the descriptive name for a particular product or service, the existence of these invalidation and revocation provisions at law means brand owners risk losing the right to enforce their trade marks and prevent competitors from using such brand names or marks in connection with the competitors' own equivalent products or services.

The judgement

The High Court (IPEC) dealt first with D-Robe's counterclaims of invalidation and/or revocation of the Dryrobe® trade marks.

On the invalidity counterclaim, it was noted that the terms "dryrobe" and "dry robe" could be easily recognised by the average consumer as descriptive of a robe which dries or keeps the wearer dry. However, this counterclaim failed on the basis that there was compelling evidence that a significant proportion of the general public identified Dryrobe®'s robes as originating from Dryrobe® due to its trade marks having acquired a sufficient level of distinctive character by the date of D-Robe's counterclaim.

Acquiring a sufficient level of distinctive character

In defeating the invalidity counterclaim, Dryrobe® relied on an important proviso in the Trade Marks Act 1994 that protects a trade mark from invalidation if, in consequence of the use which has been made of it, it acquires a distinctive character in relation to the goods for which it is registered. The Court drew parallels with the general public referring to "google" as a verb to describe an internet search, whilst still being aware that Google is a brand name and a mark of origin. The Court ultimately held that the Dryrobe® trade marks had acquired a "medium level" of distinctive character by the date of D-Robe's counterclaim, which was sufficient to defeat the invalidity counterclaim.

On the revocation counterclaim, the Court held that the Dryrobe® brand had not become a common name in the trade by the date of D-Robe's counterclaim. Consequently, the Dryrobe® trade marks could not be revoked.

Turning to the infringement claims, the Court ruled that D-Robe's name and logos were sufficiently similar to the Dryrobe® trade marks and that D-Robe's activities constituted infringement. It also ruled that the three elements of a successful passing off claim had been satisfied.

The supporting evidence – a relentless brand protection strategy

It is clear from the judgment that having a robust brand protection strategy shielded Dryrobe® from D-Robe's arguments that the trade marks had suffered genericide. This strategy involved taking steps to ensure that Dryrobe® was recognised as a badge of origin and an identifier of the business, rather than a descriptive term associated with the clothing garment in question.

A strategy to defeat genericide

To defeat arguments of genericide, Dryrobe®'s brand protection strategy included:

taking advice from specialist intellectual property solicitors and PR experts;
creating social media posts demonstrating the differences between a Dryrobe® product and the changing robes of its competitors;
having a dedicated section on the Dryrobe® website explaining how to use the term "dryrobe" or "dry robe" (for example, asking third parties to use the ® symbol when referring to the brand and highlighting that it is a registered trade mark);
creating social media posts explaining that only a genuine Dryrobe® product should be referred to using the trade marks;
pro-actively monitoring social media and other platforms (on a weekly basis and including through the use of web crawlers) for incorrect uses of the term "dryrobe" and, if used in relation to a competitor's changing robe product, contacting the user in an informal and friendly way to suggest that they amend the reference and instead describe the product as a "changing robe" (significantly, Dryrobe® had kept records of all social media posts which it had found and objected to since 15 December 2020);
instructing a PR agency to monitor third party publications and similarly make informal requests to amend their articles; and
where appropriate, taking further legal action if informal contact did not resolve the incorrect usage of its trade marks.

Dryrobe®'s brand strategy also meant that it had collected substantial evidence of consumers confusing its products with those of D-Robe. This was useful in establishing the requirements of reputation and likelihood of confusion integral to the infringement claims against D-Robe.

A strategy to prove reputation and likelihood of confusion

With regards to reputation, Dryrobe® was able to point towards:

its Dryrobe® trade marks featuring prominently in social media advertising campaigns (including through the use of supporting athletes as brand ambassadors), press interviews, TV programmes and extensive press clippings;
the number of industry awards which it had won under the Dryrobe® brand; and
its arrangements with various commercial partners (such as Team GB and Red Bull).

With regards to consumer confusion:

Dryrobe®'s routine monitoring of social media posts meant that it could evidence consumer confusion in referencing the two brands, for example a consumer who, despite wearing a D-Robe product in a posted video, used the hashtag #dryrobe and commented that they were wearing the "dry robe make"; and
Dryrobe®'s retention of consumer correspondence meant it could present various examples of consumers mistakenly contacting Dryrobe® in relation to D-Robe products (often seeking a repair, return or exchange in respect of the D-Robe product). Following disclosure in proceedings, Dryrobe® was also able to cite a number of instances where consumers had mistakenly contacted D-Robe in relation to Dryrobe® products.

In light of the Supreme Court's judgment in Iconix v Dream Pairs (which was handed down during the trial), Dryrobe® was also able to rely on evidence of post-sale confusion (as opposed to just point of sale confusion) when considering likelihood of confusion and actionable infringement. This included, for example, consumers familiar with the Dryrobe® trade marks seeing the D-Robe trade marks out and about on clothing worn by others, and being confused into believing the D-Robe brand to be connected with the Dryrobe® brand (or vice versa). Evidence of confusion of this nature strengthened the infringement claim.

Additional damages for "knowing infringement"

Also noteworthy is the Court's consideration of Regulation 3 of The Intellectual Property (Enforcement, etc.) Regulations 2006, which entitles a claimant to additional damages where the defendant "knew or had reasonable grounds to know" that it was infringing the claimant's intellectual property rights.

The Court found that D-Robe met this requirement. During the development of the D-Robe brand, D-Robe was warned by its graphic designer of the risk that the brand was too similar to the Dryrobe® brand. D-Robe had also been sent warning letters by Dryrobe® and had received communications from confused consumers from September 2023. Damages payable will be assessed in the context of the actual prejudice suffered by Dryrobe® at a later date.

Key lessons for brand owners

The diligent brand protection strategy implemented by Dryrobe® was fundamental to its success at trial and can serve as something of a blueprint for brand-conscious businesses. We would recommend that businesses take steps to police and protect the use of their key consumer brands, particularly on social media, and diligently record all actions taken and any related communications with consumers. Collectively, this may serve as important evidence should a brand be challenged or infringed.

As regards the "knowing infringement" finding, this acts as an important reminder to businesses seeking to launch infringement claims that it is often advisable (for many reasons) to send warning letters and engage in dialogue with the counterparty prior to issuing proceedings. Brand owners should also take heed of advice from specialists as regards any pre-existing confusingly similar brands in their brand selection processes.

Travers Smith's specialist intellectual property lawyers are skilled in helping businesses implement their own brand protection strategies and improve their prospects of success should a dispute arise concerning genericism or infringement more generally.

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