Dryrobe, a company known for its waterproof coats intended for use by swimmers, has succeeded in its trade mark claim against the brand D-Robe. Dryrobe brought proceedings against the lesser-known brand D-robe, owned by Caesr Group Limited, for trade mark infringement and passing off.
Dryrobe claimed that the D-ROBE sign is highly similar to its trade marks and that it is being used in connection to goods which are highly similar to those of Dryrobe’s marks. Dryrobe alleged infringement under section 10(2) of the Trade Marks Act 1994 (TMA) on the basis that the average consumer of clothing, footwear or hats may believe Caesr’s goods were connected or economically linked to those of Dryrobe due to the distinctiveness of the marks. It also claimed infringement under section 10(3) of the TMA, due to the potential detriment to the distinctiveness of the marks and Caesr’s taking advantage of the repute of the trade marks connected to the Dryrobe brand. Further, Dryrobe claimed that Caesr’s use of the marks as well as the fact it named some of its products ‘Dry Robe’ was intended to deceive members of the public into believing there is a connection between the parties and that it was therefore also liable for passing off.
Caesr argued that the term ‘Dryrobe’ described a category of goods in the mind of a consumer and that it had therefore become a generic term not capable of functioning as a trade mark. This argument was rejected by the High Court. It was held that a trade mark for a product which has become a household name does not automatically mean the mark has become generic. Caesr were found to have infringed Dryrobe’s trade marks and passed it off.
This case is important as the concept of trade mark ‘genericide’ is considered in the judgement, for which there is little existing judicial commentary.
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