Claim No: IP-2022-000086 - [2024] EWHC 1430 (IPEC)
Fecha: 19-Jun-2024
Builder Cloud Mark
Builder Cloud Mark
In relation to the Builder Cloud Mark, the Defendants submit that the “CLOUD” element adds nothing to the average consumer's overall impression of the registration as it is a generic term in the marketplace referring to specific hosting arrangements. It is also in smaller (all caps) text, in a “button” motif and could just as easily be disregarded as not forming part of the sign;
In the circumstances, they submit, BUILDER CLOUD is prima facie descriptive of at least the following emphasised parts of its specification:
Class 36 Financial services; brokerage services, namely brokerage of cloud computing services (cloud services brokerage); retail of cloud computing services; wholesale of cloud-computing services; payment services; financial services relating to the provision of cloud computing services; advisory, information and consultancy services relating to all the aforesaid services.
Class 42 Information technology (IT) services; computer services; cloud computing services; providing virtual computer systems and virtual computer environments through cloud computing; consulting and providing information in the fields of information technology, cloud computing, web services, software, software as a service (SaaS), artificial intelligence, software development, game development, databases, data processing and analytics, data storage, data warehousing, data archiving, data and information security, networking, mobile computing, and the Internet of Things (IoT); planning, design and implementation of computer technologies for others; design and development of software, databases and web services; data backup and data restoration services; remote online backup of computer data; data encryption and decryption services; software aggregation; data warehousing; technical support services, namely, software servicing, advice relating to software and troubleshooting of computer software problems; software as a service (SaaS); software as a service (SaaS) featuring software for cloud computing; software as a service (SaaS) featuring software platforms for cloud computing networks and applications; software as a service (SaaS) featuring software for collecting, editing, modifying, organizing, synchronizing, integrating, monitoring, transmitting, storage and sharing of data and information; (SaaS) featuring software for data backup and recovery; software as a service (SaaS) featuring game software; software as a service (SaaS) featuring game engine software; software as a service (SaaS) featuring software development tools; software as a service (SaaS) featuring software for application development, testing, deployment and management; software as a service (SaaS) featuring software for managing software development projects and teams; research in the field of artificial intelligence; Providing artificial intelligence computer programs on data networks; Platforms for artificial intelligence as software as a service [SaaS]; software design enabled by artificial intelligence; Software as a service (saas) services, namely, computer software development and utility tools; computer services, namely, computer software development and development of utility tools for others; providing a website featuring non-downloadable software for content management, content creation, content publishing, content filtering, content selection, content aggregation, content categorization, and content searching; software as a service (saas) services featuring software in the field of content management, content creation, content publishing, content filtering, content selection, content aggregation, content categorization, and content searching; creation, design, and development of web sites for third parties; development and updating of computer applications, including mobile applications and web applications; software videoconferencing services; automated software design; software design automated by artificial intelligence; aggregation of computing services.
- Heading
- Her Honour Judge Melissa Clarke
- THE CLAIMS
- “Category 1” alleged infringements
- Category 2 Infringement
- Joint Tortfeasorship
- The Defendants’ defence to infringement
- THE COUNTERCLAIM
- C’s Defence to Counterclaim
- THE ISSUES
- LAW
- Family of marks
- Distinctiveness
- Reputation
- Infringement
- Trade Mark Invalidity
- Targeting of websites
- Joint Tortfeasorship
- WITNESSES
- The parties
- The ‘no-code’ application development market in 2021
- The Claimant’s sales figures
- The Claimant’s market share in the UK
- The Claimant’s advertising and marketing spend
- The Claimant’s advertising and marketing activities
- Sponsorship of rugby league games
- Platinum Jubilee campaign
- Google AdWords and web searches
- ‘Builder’ and ‘Builder.ai’ as descriptive terms
- The LinkedIn Post complained of
- Other uses of signs complained of
- DETERMINATION BY ISSUE
- Issue 1: Are the Marks inherently distinctive and/or have they acquired an enhanced distinctive character in the UK by reason of the Claimant’s use of them in the course of trade?
- Builder Word Mark and Builder Home Mark
- Determination
- Builder.ai Word Mark and Builder.ai Figurative Mark
- Determination
- Builder Studio Pro Mark
- Determination
- Builder Now Mark
- Builder Cloud Mark
- Determination
- Acquired distinctiveness
- Issue 2: Do the Marks enjoy a reputation in the UK?
- Issue 3: Would the Marks be viewed by the average consumer as a family of marks by reason of their common component “ Builder ” and/or by reason of the Claimant’s use of the Marks in the course of tra
- Category One alleged infringement
- Category Two alleged infringement
- Conclusions