Keep dry and carry on: High Court finds that D-ROBE infringes DRYROBE

On 4 December last, the High Court of England and Wales decided that the trade mark “D-ROBE” infringed the word mark “DRYROBE” on the grounds of ss. 10(2) and 10(3) of the Trade Marks Act (TMA). The Court also held that Caesr Group (defendant) passed off its goods as if they were coming from or endorsed by Dryrobe Ltd (claimant).

A Kat staying dry in her DRYROBE!

Background

Since 2013, the claimant has been manufacturing outdoor clothing products – including changing robes, waterproof and windproof gowns, beach clothing, bags, and hats – and has been using the mark DRYROBE on all these goods, particularly on its main product, that is: changing robes. These were the first drying and waterproof changing robes on the UK market. And this novelty of the product provided the claimant significant profits, and some recognition in the UK.

In 2021, along with some other competitors, the defendant started producing water-resistant and warm, long changing robes and registered D-ROBE as a word mark and its logo as a figurative mark (“Shield Sign”, see below). Although the defendant’s designer confessed that “DryRobe would be … a potential issue, as they make the same product” and therefore he “deliberately steered away from branding that could be confused with them…”, the claimant found the defendant’s marks highly similar to its own, creating a likelihood of confusion among the relevant public.

In return, the defendant argued that the claimant’s mark needed to be invalidated under ss. 3(1)(b)-(d) TMA.

Assessment of Court’s decision

Starting with the grounds for invalidity, the Court first assessed whether DRYROBE lacked distinctiveness or whether it was descriptive for the goods it is used on. Applying the case law developed by UK courts and the CJEU, 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 at least one of the ordinary meanings of those words suggest a description of a robe that keeps the user dry [see para 33 of the judgment where the claimant acknowledges this]. This aligns well with Arnold J’s (as he then was) ruling that as long as one of the meanings of a term/phrase designates one of the characteristics of the relevant goods, it would be a descriptive sign, devoid of inherent distinctiveness.

This is a particularly remarkable point because, as demonstrated by the evidence that claimant provided, “dry robe” or “dryrobe” has been used not only to refer to DRYROBE products but also to refer to or describe changing robes, particularly on the Internet.

That said, the Court’s finding of acquired distinctiveness allowed it to refuse invalidating the word mark on grounds of descriptiveness. Holding that the claimant’s changing robe “serves as a walking billboard” [para 127] 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 the name of the product, and (ii) prevent 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 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.

Although one might argue that a significantly high level of acquired distinctiveness necessitates a considerable degree of popularity and fame, it can be contested that it was not appropriate for the Court to equate merely a medium level of acquired distinctiveness with reputation, thereby allowing the mark to enjoy the broader protection afforded by TMA s. 10(3). If the Court could only establish a medium level of distinctiveness [para 128], it needed to provide a more persuasive analysis than simply holding that it was “satisfied that the [m]ark had a reputation” [para 193] to establish the applicability of TMA s. 10(3).

Having reinforced the claimant’s mark’s validity, the Court then assessed whether there was a likelihood of confusion given the similarity of the signs.

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 (e.g., some customers mistook the discount code ‘DROBE10’ to be used on DRYROBE, while it was applicable on D-ROBE), there may be room for disagreement with the finding of a medium degree of conceptual similarity.

As the defendant argued, D-ROBE suggests “derobing”, i.e., taking off the robe, whereas DRYROBE suggests a robe keeping one dry, conceptually differentiating the word marks significantly. However, the Court rejected this by stating that taking off a robe would be called “disrobing”. Even if this may linguistically be an accurate statement, it is not clear why “derobing” cannot cause the average consumer – with a moderate degree of attention – to think about taking off a robe or how “derobing” can conceptually be similar to “dryrobe” given the different acts and characteristics they refer to.

Shield Sign

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.

Concluding remarks

This Kat thinks that the case was mostly correctly decided, particularly on the points of descriptiveness, distinctiveness, and the existence of likelihood of confusion. However, it seems that the Court implicitly prioritised post-sale confusion over the actual similarities of the marks, and perhaps even adjusted the levels of similarities to reflect that confusion. That said, the evidence submitted for post-sale confusion, such as consumers purchasing products from D-ROBE but filing complaints or making refund claims to DRYROBE, was strong and thus justified a finding of infringement. Because such post-sale confusion clearly demonstrates the importance of (i) allowing a certain brand to uphold the image it created in the minds of the consumers by adhering to a certain quality and (ii) ensuring that the mark can continue indicating the origin of the goods it is attached to, even after being sold, as the communication it attempts to establish with consumers does not cease after the transaction is completed; on the contrary, the use of the goods by consumers forms part of the brand’s advertising activities, continuing communication with the relevant public.







Image credit: Gemini