Intellectual Property Enterprise Court

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

Fecha: 19-Jun-2024

Conclusions

Issue 8: Was the LinkedIn Post targeted at consumers in the UK?

139.

The question, per Lifestyle Equities, is whether the average consumer would consider the website (or in this case D2’s LinkedIn Post) to be directed at him or her, as a consumer in the UK. I am satisfied that on an assessment of all the circumstances of the case, the average consumer would not. That is because:

the LinkedIn Post was not hosted on the Appy Pie Website or another website from which it was possible actually to buy goods and have them delivered. It was on D2’s LinkedIn page;

ii)

there was no clear expression of an intention to solicit custom in the UK of the type the Court of Appeal described at paragraph 170 of Merck, such as including the UK in a list or a map;

iii)

I am satisfied that the fact that the LinkedIn Post is in English, without more, would be considered by the average consumer to be insufficient evidence that it was targeted to him in the UK, English being a main language of business in India where D2 is based and also the most widely spoken language in the world;

iv)

in my judgment, the average consumer would not consider the fact that one of the seven prices in the LinkedIn Post was in pounds sterling was directed at him in the UK, as the other six of the seven prices were in US dollars; and

I am satisfied that such a small percentage of D2’s LinkedIn followers are from the UK that the average consumer would consider the LinkedIn Post to be a very poor way to target consumers such as him in the UK. Of the very small numbers who viewed it in the UK, given the Defendants’ data showing access from the Claimant, the Defendants and their solicitors, it seems entirely likely that the average consumer would consider that very few or none were genuine consumers unconnected with either party or this litigation.

140.

For that reason even if the Builder.ai Figurative Mark was valid across the Class 9 and Class 42 specifications, the Category 2 alleged infringement claim would fall at the first hurdle and be dismissed. Accordingly I will not go on to consider Issues 9, 10 and 11.

141.

I have already dealt with Issue 12 (whether the Defendants have satisfied the Court of a s. 11(2)(b) TMA defence) in [137] above. My determination set out above mean that the final issues fall away, those being Issue 13 (due cause) and Issue 14 (joint tortfeasorship).

SUMMARY

142.

The Claimant’s claims for infringement of the Marks are dismissed.

143.

The Defendants succeed on the counterclaim. All of the Marks are invalid for lack of distinctive character to the extent indicated in the emphasised specifications set out in the body of this judgment.