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

The ‘ai’ element would be disregarded by the average consumer in the same manner that the eye would skip over any top level domain associated with a sign (such as ‘.co.uk’ or ‘.org’);

When these marks appear as URLs for the Claimant’s website, that disregard of the domain means the focus is on ‘Builder’ as the subject matter of that website;

To the extent that the average consumer would parse the ‘.ai’ element, it would be understood to be a reference to a ‘builder’ that made some use of artificial intelligence to perform any given build, as explained by the Claimant on its own website (“AI has become a wider used adjective for anything autonomous (a little like “building apps” is the new “building custom software… )”);and

The weak stylisation of the Builder.ai Figurative 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; computers; computer hardware, including computer peripherals, computer components, 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; 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; 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.

Class 42 Information technology (IT) services; computer services; cloud computing services; providing virtual computer systems and virtual computer environments through cloud computing; computer software rental; 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; data warehousing; technical support services, namely, 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 development kits (SDK); 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; 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.