Intellectual Property Enterprise Court

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

Fecha: 19-Jun-2024

“Category 1” alleged infringements

“Category 1” alleged infringements

The Claimant claims that the Defendants have been using the Marks (and/or portions of them) to direct consumers away from the Claimant, causing consumers to be confused, for example by the use of the word “Builder” in the nomenclature of the Defendants’ products.

10.

Mr Howe KC for the Claimant in his closing submissions reduced the scope of this category of alleged infringements:

the Claimant no longer pursues its complaints about the Defendants’ use of words and phrases in metadata;

ii)

it no longer pursues claims under s.10(2)(b) and s.10(3) of the Trade Marks Act 1994 (“TMA”) in respect of the Builder.ai Word Mark, the Builder.ai Figurative Mark, the Builder Studio Pro Mark, the Builder Now Mark and the Builder Cloud Mark;

iii)

it pursues only its claims that the Defendants have infringed the Builder Word Mark and the Builder House Mark pursuant to s.10(2)(b) and s.10(3) TMA by the use of the word “BUILDER” on the Appy Pie Website, as described in paragraphs 11.1-11.3 of the APOC and as evidenced in three screenshots of the Defendants’ website (recovered on 29 September 2022) annexed to the APOC which it says are illustrative of the Defendants’ unauthorised and infringing usage.

11.

Paragraphs 11.1-11.3 of the APOC read as follows:

“11.1

Screenshot 1 – taken from www.appypie.com/connect shows the use of the term “BUILDER” which is identical to or similar to the Builder Word Mark and/or the Builder House Mark in several product names:

App BUILDER – with the sub-product “iPhone app BUILDER”

Chatbot BUILDER

Website BUILDER – with the sub-products “Business Website BUILDER” and “Ecommerce Website BUILDER”

In each case, the word BUILDER comprises a capital “B” and is clearly the name of a product, which is to say that such usage is not descriptive usage and is identical to or similar to the Builder Word Mark and/or the Builder House Mark.

11.2

Screenshot 2– this screenshot is taken from the page under “Appbuilder” and comprises the following uses, which relate to particular products:

•

Mobile app builder

•

Android App Builder

•

IPhone App Builder

•

On-Demand Delivery App Builder

•

Business App Builder

•

Radio App Builder

•

Accommodation App Builder

•

Restaurant App Builder

•

Shopping App Builder

•

Church App Builder

•

Taxi App Builder.

In all instances except the first one, the word “BUILDER” has a capital B and in all instances it is the name of a product and is identical to or similar to the Builder Word Mark and/or the Builder House Mark.

11.3

Screenshot 3 – features further examples of the usage of “App Builder”, “Website Builder” and “Chatbot Builder” each of which is identical to or similar to the Builder Word Mark and/or the Builder House Mark.”

12.

The Claimant pleads that this use by the Defendants is in the course of trade in the UK, as the Appy Pie Website is targeted at consumers in, inter alia, the UK. It pleads that the Marks are a family of trade marks comprising the Builder Word Mark along with additions and flourishes. It pleads that use of the word “BUILDER” by the Defendants in conjunction with one or more descriptive words in the field of computer programming, software or hardware will be perceived by the relevant public as one of the family of marks owned by the Claimant (T-194/03Bainbridge), and so associate the Defendants’ use with the Claimant’s earlier marks forming part of the series, creating a likelihood of confusion.

13.

Further, the Claimant pleads that by reason of the acts complained of, the Defendants infringed the Marks pursuant to s.10(3) TMA as they have, without the Claimant’s consent and in the course of trade, used signs that are similar to the Marks in relation to good and/or services, where the marks have a reputation in the UK and where their use, being without due cause, gives rise to an unfair advantage to the Defendants and causes detriment to the distinctive character of the Marks, sought to take an unfair advantage of the Claimant’s Marks.