Dryrobe succeeds in trade mark infringement claim and passing off

Background

In December 2025, the Intellectual Property Enterprise Court passed judgment in a case involving the outdoor clothing brand Dryrobe who brought proceedings for trade mark infringement under the Trade Marks Act 1994 (the “Act”) and passing off (when a trader misrepresents its goods or services as being those of another trader) against Caesr Group Limited (“Caesr”) for Caesr’s use of the sign “D-Robe” with very similar changing robe products.

Caesr denied the infringement and counterclaimed, challenging the validity of Dryrobe’s trade marks. Caesr claimed that the terms ‘DRY ROBE’ and ‘DRYROBE’ had become generic and had lost their ability to function as a trade mark.

The Claim

Dryrobe claimed that Caesr’s use of ‘D-Robe’ for changing robes was intentionally similar to their trade mark “DryRobe” to cause consumer confusion. The Court agreed, finding that the visual and phonetic similarities, and the fact that both marks were used in relation to identical goods, constituted trade mark infringement. The Court also agreed with DryRobe’s assertion that Caesr’s branding took unfair advantage of their good reputation and diluted the distinctiveness of the DryRobe mark.

The Counterclaim

Caesr’s counterclaim was based on the principle of “genericisation”. This occurs when a trademark or proprietary name becomes the common name for an entire category of products. As a result, the trade marks lose their distinctiveness and are vulnerable to invalidity claims. Examples include Frisbee, Aspirin, and Escalator.

Dryrobe defended the counterclaim by proving that they had taken proactive steps to protect the brand from genericisation by consistently policing the use of ‘Dryrobe’ as a category term and by pushing the term “changing robe” as the category name. A “category name” identifies the specific trade mark class which broadly describes the type of goods or services covered by a trade mark.

The Court ultimately rejected the counterclaim, finding that the trade marks were non-generic, valid, and enforceable.

The Key Takeaways

• Minor differences, such as adding a hyphen to Caesar’s trade mark, will not prevent consumer confusion when the marks are similar, and especially not when the products are identical;
• Where you have a unique or popular product, you should define a category name. Otherwise, you run the risk of the market adopting your brand as the category name by default; and
• To prevent genericisation, be vigilant of how your brand is perceived and treated. Monitor online spaces for generic use of your brand and take immediate legal action whenever you identify misuse.

If you would like any further information or advice on the information mentioned within this article, please contact Karla Dooey from the Commercial team.

*This information is for guidance purposes only and does not constitute, nor should be regarded as, a substitute for taking legal advice that is tailored to your circumstances.