Trade Marks and Passing Off - Dryrobe Ltd v Caesr Group Ltd.
Intellectual Property Enterprise Court (HH Judge Melissa Clarke) Dryrobe Ltd v Caesr Group Ltd [2025] EWHC 3167 (IPEC) (4 Dec 2025)
This was an action for trade mark infringement and passing off and a counterclaim for revocation or, alternatively, invalidation of the trade marks in suit.
Dryrobe
The claimant was a private company incorporated with limited liability under the Companies Act 2006, in the name of Dryrobe Limited ("Dryrobe"), with company number 08782079. Dryrobe makes and sells outdoor clothing products under the brand name DRYROBE. Its most popular product is the Dryrobe Advance changing robe shown in the above photograph.
The Marks
Dryrobe is the registered proprietor of the following British trade marks:
Caesr
Caesr Group Ltd. ("Caesr") was the defendant in these proceedings. The company was incorporated under company number 13157243 by Chika Russell, its only director. Caesr's main product was a waterproof or water-resistant, practical, and warm long-changing robe similar to the Dryrobe Advance. It marketed its garments under several signs that incorporated the word "D-Robe." Images of those signs appear below.
Claim
Dryrobe alleged that Caesr had infringed its trade marks under s.10 (2) and s.10 (3) of the Trade Marks Act 1994 and passed off Caesr's goods as and for Dryrobe's by marketing and selling Caesr's products under the D-Robe sign. It claimed a perpetual injunction, delivery up and destruction of infringing articles and materials, an inquiry as to damages or an account of profits, additional damages pursuant to reg 3 (1) of the Intellectual Property (Enforcement etc) Regulations SI 2006 No 1028, an order for the dissemination and publication of this judgment at Caesr's expense, interest and costs.Defence
Caesr denied infringement and passing off, alleging that Dryrobe's "DRYROBE" and "DRY ROBE" marks were descriptive. It counterclaimed for the invalidation of those marks under s.3 of the Trade Marks Act 1994 and their revocation under s.46 (1) (c).
Issues
At a case management conference before His Honour Judge Hacon on 12 Feb 2025, the judge ordered the following issues to be tried:
i) Section 46 (1) (c) TMA and/or
ii) Section 47 (1) TMA
Infringement of the Marks -
iii) Whether the Marks have a reputation (and/or an enhanced reputation) in the UK
iv) Whether the Defendant's use of the D-Robe Sign is similar to the Marks
v) Whether the Defendant's use of the D-Robe Sign gives rise to a likelihood of confusion on the part of the average consumer
vi) Whether the Defendant's use of the D-Robe Sign causes detriment to, or takes unfair advantage of, the distinctive character or repute of the Marks
vii) Whether the Defendant's use of the D-Robe Sign is without due cause
Passing Off -
viii) Whether the Claimant owns goodwill in the Marks
ix) Whether the Defendant's use of the D-Robe Sign is liable to deceive members of the public into believing that its goods are authorised by the Claimant or connected with the Claimant's business
x) If so, whether such misrepresentation has caused the Claimant damage
Relief -
xi) Whether any infringing acts committed by the Defendant have been knowing and deliberate."
Trial
The action and counterclaim came on for trial before Her Honour Judge Melissa Clarke on 23 and 24 June 2025. She handed down her judgment in Dryrobe Ltd v Caesr Group Ltd [2025] EWHC 3167 (IPEC) on 4 Dec 2025. Between paras [209] and [213] she held as follows:
"[209] The Marks are validly registered (save that the specification of the '428 Mark will be reduced as set out in the paragraph above for non-use).
[210] The counterclaim for revocation pursuant to section 46 (1) (a) is dismissed.
[211] The Marks are infringed by the Defendant's use of the D-ROBE Sign and the Shield Sign complained of.
[212] The Defendant knew or had reasonable grounds to know that it was engaged in infringing activity pursuant to Regulation 3 of the IP Enforcement Regs.
[213] The Defendant has passed off its goods as those of the Claimant."
"[209] The Marks are validly registered (save that the specification of the '428 Mark will be reduced as set out in the paragraph above for non-use).
[210] The counterclaim for revocation pursuant to section 46 (1) (a) is dismissed.
[211] The Marks are infringed by the Defendant's use of the D-ROBE Sign and the Shield Sign complained of.
[212] The Defendant knew or had reasonable grounds to know that it was engaged in infringing activity pursuant to Regulation 3 of the IP Enforcement Regs.
[213] The Defendant has passed off its goods as those of the Claimant."
The learned judge referred to the following sections of the Trade Marks Act 1994:
...
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
... Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as the result of the use made of it.
............
47 (1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).Where the trade mark was registered in breach of subsection (1) (b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has, after registration, acquired a distinctive character in relation to the goods or services for which it is registered.
..........
72 In all legal proceedings relating to a registered trade mark (including proceedings for rectification of the register), the registration of a person as proprietor of a trade mark shall be prima facie evidence of the validity of the original registration."
She observed that Mr Justice Arnold had considered the authorities underlying an assessment of descriptiveness and distinctiveness between paras [90] and [94] of his judgment in Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2012] EWHC 3074 (Ch), [2013] FSR 29. Without setting out those paragraphs or the cases in full she noted in particular para [31] of the judgment of the Court of Justice of the European Union ("CJEU") in C-265/09 P OHIM v BORCO-Marken-Import Matthiesen GmbH & Co KG EU: C:2010:508, ECLI:EU: C:2010:508, [2010] EUECJ C-265/9, [2010] EUECJ C-265/09, [2011] E.T.M.R. 4 that for a trade mark to have distinctive character, it must be capable of functioning as an indicator of trade origin and para [32] that distinctive character "must be assessed, first, by reference to the goods and services in respect of which registration has been applied for and, second, by reference to the perception of them by the relevant public".
She also considered paras [36] and [37] of the CJEU's judgment in C-51/10 P Agencja Wydawnicza Technopol sp z oo v OHIM ECLI:EU: C:2011:139, [2011] EUECJ C-51/10, EU: C:2011:139, [2011] ETMR 34 that each of the grounds for refusal must be interpreted in the light of the general interest underlying it. In the case of art 7 (1) (c) of Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark (equivalent to s.3 (1) (c)) para [37] states that it is "that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services." In order to ensure that objective, para [38] adds that it is "not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes"
The iudge concluded at para [80] of her judgment that the test is that a sign can be refused registration under, s3 (1) (c) "only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics" and if at least one of its possible meanings designates a characteristic of the goods or services concerned.
She added at [81] that there is a measure of overlap between s3 (1) (b) and s.3 (1) (c) of the Trade Marks Act 1994, but they are independent of one another. Referring to paras [33] and [46] of the CJEU's judgment in Agencia Wydawnicza, she said that if a sign is descriptive pursuant to s.3 (1) (c), it is also devoid of any distinctive character for the purposes of s. 3 (1) (b), but it may be devoid of distinctive character under s.3 (1) (b) for reasons other than that it is descriptive.
Caesr relied on British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, [1997] ETMR 118, [1996] EWHC 387 (Ch) and McCain International Limited v Country Fair Foods Limited [1981] RPC 69 on the question of distinctiveness and descriptiveness of novel products. Dryrobe relied on TVIS Ltd v Howserv Services Ltd [2024] EWCA Civ 1103, [2024] FSR 34 to support its case on non-descriptiveness of DRYROBE. It also referred to Case C-383/99P Procter & Gamble v OHIM [2002] RPC 17, [2002] ETMR 3, Case C-383/99, EU: C:2001:461, [2001] EUECJ C-383/99, [2001] CEC 325, [2001] ECR I-6251, [2002] All ER (EC) 29, [2002] 2 WLR 485, ECLI:EU: C:2001:461, [2002] Ch 82 notwithstanding the criticism of the decision in Kerly's Law of Trade Marks and Trade Names 17th edition at 10-105. Judge Melissa Clarke accepted that Procter & Gamble v OHIM remained a binding authority. All of the above cases turned on their own facts. The learned judge said that she had set out the test and principles that apply to the assessment of descriptiveness and distinctiveness above and that she would apply them to reach her conclusion.
In relation to s.3 (1) (d) of the Trade Marks Act 1994, the judge directed herself that in the context of an invalidity counterclaim, the court must assess whether the relevant registered trade mark was customary for the purposes of that subsection as at the filing date of that trade mark. Referring to T-322/03 Telefon & Buch Verlagsgesellschaft GmbH v EUIPO [2006] EUECJ T-322/3, [2006] EUECJ T-322/03 she said that the General Court had made clear that such an assessment must be carried out firstly by reference to the goods and services in respect of which the relevant mark is registered, and secondly, on the basis of the average consumer's perception of the mark.
Finally, the judge considered the proviso to s.3 (1) of the Trade Marks Act 1994. She said at para [90] that if a trade mark was registered in breach of any of the absolute grounds set out in section 3 of the Act, it shall be declared invalid, subject only to the exception that it will not be declared invalid where the ground for invalidity is section 3 (1) (b), (c) or (d) and it is shown that, in consequence of the use made of it, the mark has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
Dryrobe relied on Mr Justice Arnold's guidance at para [57] of his judgment in Société des Produits Nestlé SA v Cadbury UK [2016] Bus LR 354, [2016] WLR(D) 23, [2016] EWHC 50 (Ch) which was affirmed by the Court of Appeal between paras [16] and [22] and [52] of its judgment in Societe Des Produits Nestle SA v Cadbury UK Ltd [2017] EWCA Civ 358, [2017] FSR 34, [2017] Bus LR 1832, [2017] WLR(D) 331. Caesr cited paras [72] to [76] of Mr Justice Arnold's judgment in Frank Industries Pty Ltd v Nike Retail BV [2018] EWHC 1893 (Ch), [2019] ETMR 4. The judge said that those cases summarized the CJEU's guidance in Case C-108/97 Windsurfing Chiemsee Produktions-und Vertriebs GmbH v Boots-und Segelzubehor Walter Huer & Franz Attenberger [1999] ECR I-2779, [2000] 2 WLR 205, [1999] ETMR 585, [2000] Ch 523, [1999] EUECJ C-108/97 and Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Limited [2003] 2 WLR 294, [2003] Ch 159, EU: C:2002:377, [2002] EUECJ C-299/99, [2002] ECR I-5475, ECLI:EU: C:2002:377. She concluded at para [91] that
"in assessing whether a trade mark has acquired distinctive character, it must make an overall assessment of the relevant evidence which includes the nature of the mark itself (including that it does or does not contain an element descriptive of the goods or services for which it has been registered), but may include: (i) the market share held by goods bearing the mark; (ii) how intensive, geographically widespread and long-standing the use of the mark has been; (iii) the amount invested by the proprietor in promoting the mark, (iv) the proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor; (v) evidence from trade and professional associations (I pause to note there is none in this case); (vi) where the court has particular difficulty in assessing the distinctive character, an opinion poll (again, there is none in this case)."
She observed at [92] that the assessment is made through the eyes of the average consumer. Referring to paras [85] and [86] of Mr Justice Arnold's judgment in Jack Wills v House of Fraser [2014] EWHC 110 (Ch), [2014] FSR 39, Judge Melissa Clarke held that the average consumer is a consumer of the goods or services for which the trade marks relied on are registered. Save for trade mark number UK00003001195, the marks had been registered in general categories of goods such as clothing, bags and hats. As such, both parties accepted that the average consumer was a member of the UK general public. The parties agreed, and the judge accepted that the average consumer paid a moderate degree of attention when buying or considering a purchase of such everyday retail goods. It was also agreed that the average consumer frequently makes online purchases.
Judge Melissa Clarke accepted at para [100] of her judgment that DRYROBE was a portmanteau word of the ordinary English words "Dry" and "Robe". In her view, DRYROBE could not reasonably be considered descriptive of hats, beanie hats or beanies for which UK00918088428, UK00003751826 and UK0003855456 had been registered. She took a different view of the remainder of the goods for which the marks were registered, which included "changing robes," "waterproof and windproof robes", "robes, gowns and capes of towelling material", and "beach wraps". She explained her reasoning in para [102]:
"i) ROBE is a long loose garment or outer garment; DRY is an intended purpose of such a garment in both senses of 'to dry' the wearer and 'to keep dry' the wearer. As such, DRYROBE is easily recognisable by the average consumer as descriptive of at least one characteristic of the goods set out above, namely of being a robe which dries or keeps dry the wearer;
ii) this goes beyond mere allusiveness, per VETSURE, and falls squarely into descriptiveness in my assessment;
iii) although in this case the characteristic of the goods registered (being robes that both dry and keep dry the wearer) are in fact very significant commercially to the Claimant in relation to its "hero product" the Dryrobe Advance, the authorities make clear that the Europig test extends to any characteristic of the goods or services for which the mark is registered irrespective of how significant the characteristic may be commercially;
iv) the fact that at the time of the registration of the '195 mark the word DRYROBE was not actually in use by the relevant public is not relevant (per OHIM v Wrigley at [32]). In my assessment, at that time it could have been used to designate a characteristic of the goods or services. In respect of the '428 Mark, '826 Mark and '456 Marks, by the time of registration they were in use to designate a characteristic of the goods or services for which they were registered;
v) although DRYROBE could be understood by the average consumer to have other meanings, as the Claimant submits, it is sufficient that at least one of its possible meanings designates a characteristic of the goods or services concerned per Starbucks at [92];
vi) similarly, the fact that the same goods could be described in a different way (e.g. changing robe, change robe, swim parka), or even are more usually described in a different way, is not relevant per Agencia Wydawnicza at [39]."
"i) ROBE is a long loose garment or outer garment; DRY is an intended purpose of such a garment in both senses of 'to dry' the wearer and 'to keep dry' the wearer. As such, DRYROBE is easily recognisable by the average consumer as descriptive of at least one characteristic of the goods set out above, namely of being a robe which dries or keeps dry the wearer;
ii) this goes beyond mere allusiveness, per VETSURE, and falls squarely into descriptiveness in my assessment;
iii) although in this case the characteristic of the goods registered (being robes that both dry and keep dry the wearer) are in fact very significant commercially to the Claimant in relation to its "hero product" the Dryrobe Advance, the authorities make clear that the Europig test extends to any characteristic of the goods or services for which the mark is registered irrespective of how significant the characteristic may be commercially;
iv) the fact that at the time of the registration of the '195 mark the word DRYROBE was not actually in use by the relevant public is not relevant (per OHIM v Wrigley at [32]). In my assessment, at that time it could have been used to designate a characteristic of the goods or services. In respect of the '428 Mark, '826 Mark and '456 Marks, by the time of registration they were in use to designate a characteristic of the goods or services for which they were registered;
v) although DRYROBE could be understood by the average consumer to have other meanings, as the Claimant submits, it is sufficient that at least one of its possible meanings designates a characteristic of the goods or services concerned per Starbucks at [92];
vi) similarly, the fact that the same goods could be described in a different way (e.g. changing robe, change robe, swim parka), or even are more usually described in a different way, is not relevant per Agencia Wydawnicza at [39]."
As to whether the trade
marks
consisted
exclusively
of
signs
or
indications
which
had become
customary
in
the
current
language
or
the
bona
fide
and
established
practices
of
the
trade within the meaning of s.3 (1) (d) of the Act, the learned judge was not satisfied that the marks in suit were not capable of fulfilling or had lost their function of distinguishing the goods and services of one undertaking from those of other undertakings by the relevant date. In her judgment, a significant proportion of persons with the characteristics of the average consumer recognized and understood DRYROBE as a brand name before that date.
Dryrobe submitted that marks that the judge had found to be descriptive had nevertheless acquired a distinctive character on the date of the counterclaim for the following reasons:
(1) The volume of sales;
(2) Dryrobe's market position;
(3) The sheer volume of media coverage of DRYROBE as a brand;
(4) The extensive sums spent by Dryrobe on marketing;
(5) Direct evidence from members of the public; and
(6) Evidence of actual confusion by consumers.
Caesr denied that the evidence supported a finding of acquired distinctiveness.
Standing back and looking at all the evidence through the eyes of the average consumer, Her Honour was satisfied that there was compelling evidence that a significant proportion of the general public as at the date of the counterclaim identified Dryrobe's goods as originating from it because of the marks in suit, and that thpse marks had by that date acquired a medium level of distinctive character.
It followed that the invalidity counterclaim failed, and the marks would not be revoked under s. 47 (1) of the Act.
Whether the Marks should be revoked under s.46 (1) (c) of the Trade Marks Act
Judge Melissa Clarke noted at para [130] of her judgment that there was no dispute that the registration of a trade mark may be revoked under s.46 (1) (c) of the Act on the ground "that in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered." That provision aligned with art 12 (2) (a) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (recast) (Text with EEA relevance) OJ L 336, 23.12.2015, pp. 1 – 26. It covered a situation in which a previously distinctive trade mark which had functioned as an indication of origin had developed into a generic name and so ceased to perform that function as in Case C-371/02 Biomekulla Fruktindustrier AB v Procordia Food AB [2004] ETMR 69 and Case C-409/1 Backaldrin Osterreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH 2 [2014] ETMR 30.
The judge accepted Caesr's submission that DRYROBE had become a household name by the date of the counterclaim and that there was significant evidence of its use by the general public as a category term by that date. However, Her Honour also found that DRYROBE had acquired distinctiveness. Such distinctiveness allowed it to function as a trade mark to distinguish the goods and services of one undertaking from those of others. She found that it had not become a common name in the trade for the purposes of s.46 (1) (c) by the date of the counterclaim. For that reason, it was not susceptible to revocation pursuant to that section.
Infringement: Whether Caesr has infringed Dryrobe's Marks under s.10 (2)
Judge Melissa Clarke considered s.10 (2) of the Trade Marks Act 1994:
"A person infringes a registered trade mark if he uses in the course of trade a sign where because -
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark."
"A person infringes a registered trade mark if he uses in the course of trade a sign where because -
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark."
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."
Referring to para [87] of Lord Justice Kitchin's judgment in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19 the judge observed at para [145] of her judgment in Dryrobe that the same principles are applicable when considering infringement, but it is necessary for this purpose to consider the actual use of the sign complained of in the context in which the sign has been used.
She noted that there was no dispute that confusion for the purposes of s.10 (2) of the Act can arise directly, indirectly, and the "wrong way round", which is where consumers believe that goods or services denoted by the trade mark come from the same undertaking as goods and services denoted by the sign, or an economically linked undertaking.
She noted that there was no dispute that confusion for the purposes of s.10 (2) of the Act can arise directly, indirectly, and the "wrong way round", which is where consumers believe that goods or services denoted by the trade mark come from the same undertaking as goods and services denoted by the sign, or an economically linked undertaking.
She referred yet again to para [87] of Lord Justice Kitchin's judgment in Specsavers:
"...the question in every case remains the same, namely whether, having regard to a notional and fair use of the mark in relation to all the goods and services for which it is registered and the actual use of the sign, there is a risk that the average consumer might think that the goods and services come from the same undertaking or economically linked undertakings, and that is all."
She also referred to para [224] of Mr Justice Arnold's judgment in Interflora v Marks & Spencer [2013] EWHC 1291 (Ch), [2013] FSR 33:
"The fact that many consumers of whom the average consumer is representative would not be confused does not mean that the question whether there is a likelihood of confusion is to be answered in the negative if a significant number would be confused".
"The fact that many consumers of whom the average consumer is representative would not be confused does not mean that the question whether there is a likelihood of confusion is to be answered in the negative if a significant number would be confused".
Finally, the learned judge considered the Supreme Court's guidance on post-sale confusion in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2025] UKSC 25, [2025] WLR(D) 337, [2025] Bus LR 1391:
"Arnold LJ, at para 12 of his judgment in this case, stated that:
'...... it is possible in an appropriate case for use of a sign to give rise to a likelihood of confusion as a result of post-sale confusion even if there is no likelihood of confusion at the point of sale.'
We agree with that statement of the law. We reject Dream Pairs' submission that only post-sale confusion affecting or jeopardising the essential function of a trade mark as a guarantee of origin at the point of a subsequent sale or in a subsequent transactional Page 34 context can amount to an actionable infringement. We also reject Dream Pairs' submission that before there is an actionable infringement the post-sale confusion must result in damage at the point of sale or in a transactional context in the sense of influencing consumers when they make a choice with respect to the goods or services in question; see para 69 above."
"Arnold LJ, at para 12 of his judgment in this case, stated that:
'...... it is possible in an appropriate case for use of a sign to give rise to a likelihood of confusion as a result of post-sale confusion even if there is no likelihood of confusion at the point of sale.'
We agree with that statement of the law. We reject Dream Pairs' submission that only post-sale confusion affecting or jeopardising the essential function of a trade mark as a guarantee of origin at the point of a subsequent sale or in a subsequent transactional Page 34 context can amount to an actionable infringement. We also reject Dream Pairs' submission that before there is an actionable infringement the post-sale confusion must result in damage at the point of sale or in a transactional context in the sense of influencing consumers when they make a choice with respect to the goods or services in question; see para 69 above."
The signs under which Caesr marketed its goods were as follows:
The judge compared those signs to DRYROBE which the claimant had registered under trade mark number UK00918088428.
Her Honour found that D-ROBE and DRYROBE had a high degree of visual similarity. The sign shared 5 of the same letters as the mark and in the same order beginning with 'D' and ending with 'ROBE'. She considered that the mark and sign had a medium degree of aural similarity as both contained "-ROBE" pronounced identically. The first syllable "dri-" and "D" had some aural similarity in starting with the same hard 'D' sound. She found a degree of conceptual similarity between the mark and the sign because of the shared concept of a 'robe'. She therefore assessed the mark and sign as having a medium level of conceptual similarity. Taking all those matters into account, she assessed D-ROBE and DRYROBE as having a medium to high level of similarity. Caesr accepted that the mark and sign had been used on identical goods.
In considering whether the similarity between UK0091808842 and the word and shield signs would give rise to a likelihood of confusion, Judge Melissa Clarke quoted para [121] of Lord Justice Arnold's judgment in Lidl Great Britain Ltd and another v Tesco Stores Ltd and Another (Rev1) [2024] EWCA Civ 262, [2025] 1 All ER 311 that "the best description of the correct approach to the assessment of likelihood of confusion in trade mark cases and misrepresentation in passing off" was that of Mr Justice Jacob in Neutrogena Corp v Golden Ltd [1996] RPC 473 at 482:
The judge ruled at para [167] that the date of assessment was March 2022 which was when the D-ROBE and the shield signs were first used and when Caesr's products were first sold online.
Applying these principles between [176] and [190], the learned judge held that Caesr's use of the above signs amounted to an infringement of UK0091808842 under s.10 (2) of the Trade Marks Act 1994.
Infringement: whether Caesr has infringed Dryrobe's Marks Under s.10 (3)
Her Honour understood the parties to have agreed that the outcome of the s.10 (3) proceedings would flow from the conclusion on s.10 (2). In case she was wrong, she dealt with the issue as follows. Her starting point was whether Caesr's use of its signs diluted the distinctive character and/or took unfair advantage of the reputation of Dryrobe's marks. Although reputation and acquired distinctive character are, technically, different concepts, she was satisfied that the marks had a reputation by 1 March 2022, the date upon which Caesr began to trade. She based her finding that the marks had a reputation on the evidence that Dryrobe's marks had acquired distinctiveness. The evidence of confusion for the purposes of s.10 (2) supported her finding of a link. She was satisfied that there was a likelihood of a change in economic behaviour. She concluded that Caesr had infringed Dryrobe's marks under s.10 (3) of the Trade Marks Act 1994.
Passing off
The judge found that the three elements of an action for passing off had been established and held that Caesar had passed off its goods as and for those of Dryrobe.
Whether any Infringing Acts Committed by Caesr had been Knowing and Deliberate
The significance of this issue is that reg 3 of The Intellectual Property (Enforcement, etc.) Regulations 2006 provides:
(2) When awarding such damages—
(a) all appropriate aspects shall be taken into account, including in particular—
(i) the negative economic consequences, including any lost profits, which the claimant has suffered, and any unfair profits made by the defendant; and
(ii) elements other than economic factors, including the moral prejudice caused to the claimant by the infringement; or
(b) where appropriate, they may be awarded on the basis of the royalties or fees which would have been due had the defendant obtained a licence.
....... "
Judge Melissa Clarke found that Caesr knew or had reasonable grounds to know that it was engaged in infringing activity, for the purposes of reg 3 from at least September 2023 when confused customers were presenting themselves. By that time, Caesr had known of Dryrobe's concerns from letters sent in April 2022. Whether or not additional damages were payable was a matter for assessment at a later date of the actual prejudice suffered by the Dryrobe, if any.
Partial Revocation of Trade Mark Number UK00918088428 for Non-Use
The judge noted that s.46 (1) (a) of the Trade Marks Act 1994 provides that the registration of a trade mark may be revoked on ground that within the period of 5 years following the date of completion of the registration procedure it had not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use." She said that meant non-token use as an origin-identifying sign as explained in Case C-40/01, Ansul BV v Ajax Brandbeveiliging BV [2003] ETMR 85, EU: C:2003:145, [2003] EUECJ C-40/01, [2005] Ch 97, [2003] EUECJ C-40/1, ECLI:EU: C:2003:145, [2003] ECR I-2439, [2004] 3 WLR 1048.
Dryrobe admitted non-use of the mark in respect of certain specified goods in classes 16, 25, 26 and 35 and had sought the removal of those goods from its specification. It provided evidence of non-token use of key straps, fabric patches, lanyards, cushions and related services which the judge accepted. However, Dryrobe provided no evidence of genuine use of gift cards, cardboard gift boxes, gift boxes made of cardboard, printed matter, gift bags, paper bags, newsletters, stickers, decals, stationery, beach shoes or related services. The learned judge ordered the specification to be reduced accordingly.
Comment
Several interesting and important points of law are discussed in this case, particularly in relation to the descriptiveness of a mark and whether it has acquired a distinctive character through use. All relevant authorities are reviewed and, where appropriate, analysed. Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page at any time.
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