Trade mark descriptiveness, genericide and the power of acquired distinctiveness (Dryrobe v Caesr Group)
IP analysis: When a trade mark is descriptive of the products for which it is registered, or the mark is generic, it is liable to be invalidated because the mark may not distinguish the products of one undertaking from another (ie, it may not operate as a trade mark). However, a mark that is prima facie descriptive or generic can be rescued by acquiring distinctiveness. These issues were a key battleground in this case, which provides particularly useful guidance for practitioners on the relevant factors for genericide. The court held that, while DRYROBE was not a generic term at any relevant time, it was descriptive of robes that dry the wearer or keep them dry. Therefore, had the court not gone on to find that DRYROBE had acquired a distinctive character, the claimant’s marks would have been invalidated in relation to all specified categories of goods containing such robes. The finding of acquired distinctiveness meant the cClaimant retained its registrations in full and, ultimately, succeeded in its infringement claim against the defendant. Written by Robert Dickens, associate at White & Case LLP.