Claim No: IP-2022-000086 - [2024] EWHC 1430 (IPEC)
Fecha: 19-Jun-2024
Builder Word Mark and Builder Home Mark
Builder Word Mark and Builder Home Mark
In relation to the Builder Word Mark and Builder Home Mark, the Defendants submit the word “Builder” is prima facie descriptive of at least the following emphasised parts of their (identical) specifications because:
“Builder” designates the kind, intended purpose and broad characteristics of the goods and services and are therefore descriptive and non-distinctive within s.3(1)(c) TMA;
“Builder” is a generic term in the industry for products and services that enable the average consumer to ‘build’ technology functionality, whether that is in relation to websites, chatbots, or apps and so falls within s.3(1)(d) TMA; and
the weak stylisation of the Builder Home Mark does not save it:
Class 9 Computer programs; magnetic disks and tapes containing computer programs; computer software; computer hardware; memory boards for use with computers; programmed chips; cartridges embodying computer programs; computer software and firmware; 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 controlling the display of television programs, other data and content delivered over global information networks; computer programs for managing communications and data exchange between handheld computers and desktop computers; videoconferencing software; computer keyboards and computer video control devices, namely computer mice, trackballs, joysticks and gamepads; computers for use in automobiles and computer programs therefor; wallet-sized personal computers and computer programs therefor; optical disc players and computer programs therefor; electronic devices for receiving television and global communication network transmissions and transmitting them to a television or other display device and computer programs for use therewith; telephones and computer programs for controlling the operation thereof; telephones for use in telecommunications over global communication networks and computer programs for controlling the operation thereof; entertainment consoles comprising computer hardware and software for providing audio, video and multimedia output; electronic pagers and electronic pager modules included in other devices and computer programs therefor; handheld computers; electronic equipment for playing games and operating system software for use therewith.
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.
- 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