Protecting your brand from 'genericide': Lessons from Dryrobe v D-Robe

Judge Melissa Clarke delivered one of the most comprehensive judgments on trade mark genericism in recent UK case law. Dryrobe Ltd v Caesr Group Ltd offers invaluable practical take homes for brand owners seeking to protect descriptive or well-known marks from becoming generic terms.

The Dryrobe story

Dryrobe created the UK's first drying and waterproof changing robe, commencing trading and registered their first DRYROBE trade mark in 2013. The business exploded during COVID-19 as outdoor swimming surged in popularity, transcending its original surfer and swimmer market to become ubiquitous in everyday life (even though they are not to everyone’s taste).

Until 2018 or 2019, there were no direct competitors for Dryrobe’s changing robe products in the UK. By the time Dryrobe’s proceedings against Caesr, reached trial, there were around around 200 competitor companies selling changing robes in the UK, including the Defendant Caesr Group Limited, which began selling its ‘D-Robe’ changing robe in 2022.

Dryrobe sued Caesr for trade mark infringement under the Trade Marks Act 1994 (TMA). Caesr counterclaimed that the DRYROBE mark should be declared invalid or revoked because it was merely descriptive and had become generic.

The descriptiveness finding: s3(1)(c) TMA

The court found DRYROBE was descriptive for core products (changing robes, waterproof robes, clothing). It was a portmanteau created out of ordinary English words: (1) "ROBE" denoting a long, loose garment; and (2) "DRY" describing the purpose of keeping the wearer dry.

Of course, it is not always the case that a combination of words is descriptive, however, here the combination went beyond mere allusiveness and was found to be squarely descriptive (DRYROBE was not descriptive, however, of bags, hats, or beanies).

Despite descriptiveness, Dryrobe successfully demonstrated that their marks had acquired distinctive character by the date of Caesr’s counterclaim for invalidity, through:

• Market dominance: The defendant's witness admitted Dryrobe was "the biggest player in the [UK changing robe] market".
• Extensive use: Intensive use since 2019, substantial sales revenues, high-profile partnerships with Red Bull and Team GB.
• Marketing investment: Significant documented expenditure on advertising and brand protection.
• Public recognition: Widespread press coverage and consumer awareness.
• Consumer perception evidence: Gathered from social media and customer service channels.

Accordingly, D-Robe’s invalidity counterclaim under s.47 TMA failed.

The genericide threat: s46(1) TMA

The more serious challenge came under section 46(1) — whether DRYROBE had become a common name for the goods and services for which it was registered, and therefore ceased to function as a trade mark.

What is genericide?

Key principles (summarised in Hormel Foods i.e. the SPAM case):

• Sufficient if it becomes a common name, not necessarily the only or most commonly used name.
• Proprietors of descriptive marks "bear a heavier burden to take steps to prevent it becoming a common name".
• What matters is cogent evidence the mark has lost its function of distinguishing goods (Rousselon). 

Examples of former trade marks that became generic include Trampoline, Escalator, Aspirin, Thermos, and Zipper. Examples of trade marks that remain protected despite generic use include: Hoover, Frisbee and Google.

Why Dryrobe won

Judge Melissa Clarke acknowledged that DRYROBE had become a household name, which was frequently used instead of "changing robes." 

Distinctiveness had been partially eroded — she would have found high distinctiveness in 2022, but only medium by 2024.

Despite this vulnerability, a significant proportion of people still recognised DRYROBE as a brand name. The decisive factor was Dryrobe's extensive, proactive, and relentless brand protection strategy.

Dryrobe's anti-genericide strategy

The court described Dryrobe's approach as “relentless”. It involved:

Educational marketing

• "No Substitutes" videos explaining only genuine Dryrobe’s can be called Dryrobe.
• Comparative advertising of Dryrobe’s products against ‘generic’ competitors. 
• Active promotion of "changing robes" as the category term.

Rigorous trade mark usage

• Never using DRYROBE without the ® symbol – with consistent implementation across all platforms.
• Avoiding use of DRYROBE as a noun.
• A dedicated website section explaining proper usage to consumers and third parties.

Active monitoring and enforcement

• Weekly social media searches with friendly contact requesting users change "dryrobe" to "changing robes".
• Internet crawler technology monitoring resale marketplaces, social media, domains, and AdWords.
• PR agency monitoring press usage.
• Legal letters sent when informal approaches failed.

Documentation

• Detailed evidence of marketing and legal budgets for enforcement.
• Comprehensive records proving active brand protection (similar to those used to demonstrate acquired distinctiveness). 

The infringement outcome

The court found infringement under s.10(2) and 10(3) of the TMA, as well as passing off. The court’s reasoning for reaching these findings included:

• There was medium to high similarity between DRYROBE and D-ROBE for identical goods, creating a high likelihood of confusion.
• The average consumer would perceive the “D-“ as replacing "RY" in DRYROBE.
• The clear instances of actual customer confusion were compelling – over 30 customers contacted Dryrobe trying to return D-Robe products.
• The defendant's argument that Dryrobe must tolerate confusion having chosen a descriptive name was firmly rejected.

Conclusion

The Intellectual Property Enterprise Court’s judgment in Dryrobe v Caesr [2025] EWHC 3167 (IPEC) provides both a warning about the real risk of genericide for successful brands and a detailed roadmap for implementing protective strategies that courts will recognise and reward.

The law in this area expects trade mark owners to take steps to prevent their marks from becoming common names. Doing nothing is not an option.

Key takeaways: Know when to act

New trade mark applications

• Assess genericide risk at the outset (higher for descriptive terms).
• Build enforcement into brand launch plans.
• Budget for ongoing protection.

For existing portfolios

• Audit current monitoring and enforcement practices.
• Implement systematic documentation.
• Consider investing in technology solutions.

Look out for red flags requiring immediate action

• Press using your mark generically.
• Competitors using your mark descriptively.
• Dictionary entries treating your mark as a common word.
• Widespread generic social media use.

Before issuing infringement proceedings

• Is the mark vulnerable to a counterclaim under s.46(1)? 
• Consider the extent of documentary evidence available to support defence of a s.46(1) counterclaim.