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

My finding that the Builder Word Mark and the Builder Home Mark lack inherent or acquired distinctiveness and are invalid to the extent set out in the emphasised specifications above, means the Category 1 alleged infringement claim must fail and be dismissed. Mr Howe in closing appeared to accept that there was only room for a finding of infringement if I found the Builder Word Mark to be valid, which I have not in respect of the uses complained of. The Claimant has accepted by Ms Gupta’s evidence that it has no complaints about D2’s use of ‘Builder’ save when it is capitalised and not used in a title or heading. Although D2 has used ‘Builder’ in the UK as complained of, which is identical to the Builder Word Mark and highly similar to the Builder House Mark (given my findings about the weakness of the stylisation of that mark), I am satisfied that it has only used it together with preceding words (‘App Builder’, ‘Android App Builder’ etc) (and never solus), as an ordinary and descriptive word to describe the purpose of those products. Accordingly: (i) the average consumer would perceive that use as merely descriptive and not use in a trade mark sense as an indicator of the origin of goods and services, and so would not be likely to be confused for the purposes of s. 10(2)(b) TMA; (ii) s. 10(3) TMA would fail for lack of distinctive character of the Marks; and (iii) as Mr Howe acknowledged in closing if the Court was satisfied that the D2’s use was descriptive, D2 has the benefit of the s. 11(2)(b) TMA defence. For those reasons, I will not go on to consider Issues 4 – 7.