Intellectual Property Enterprise Court

Claim No: IP-2022-000086 - [2024] EWHC 1430 (IPEC)

Fecha: 19-Jun-2024

Builder Now Mark

Builder Now Mark

115.

In relation to the Builder Now Mark, the Defendants submit that the “NOW” element adds nothing to the average consumer’s overall impression of the registration as it is simply a call to action or reference to the immediacy of BUILDER. It is also smaller text within a button motif and could just as easily be disregarded if not forming part of the sign. For those reasons, the Defendants submit that the Builder Now Mark is prima facie descriptive of at least the following emphasised parts of its specification:

Class 9 Computer programs; computer software; computer hardware; computer applications, including applications for running on mobile devices and web applications; software for building computer applications, including applications for running on mobile devices and web applications; computers; computer hardware, including computer peripherals; computer components; Downloadable computer software, namely, computer software development and utility tools. downloadable software for content management, content creation, content publishing, content filtering, content selection, content aggregation, content categorization, and content searching; computer programs, namely operating system programs; computer programs for playing games; computer programs for managing communications and data exchange between handheld computers and desktop computers; none of the aforesaid in relation to entertainment, on demand television services, telecommunications, broadcasting, broadband and fixed line mobile telephony.

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; prototyping of computer apps; creation of preview versions of computer applications; products of layouts for computer software, including applications; production of MVPs (minimum viable products) and beta products in computer software; none of the aforesaid in relation to entertainment, on demand television services, telecommunications, broadcasting, broadband and fixed line mobile telephony.

116.

I am with the Defendants. In my judgment, the average consumer will immediately perceive the Builder Now Mark as having no distinctive character, for the reasons the Defendants give. As such, I am satisfied that the Builder Now Mark is inherently unable to identify the goods and services for which it is registered (as the Defendants limit their invalidation case) as originating from the Claimant and so distinguish it from goods or services of other undertakings, as at the registration date.