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Intellectual Property Enterprise Court
Claim No: IP-2022-000086 - [2024] EWHC 1430 (IPEC)
Fecha: 19-Jun-2024
C’s Defence to Counterclaim
C’s Defence to Counterclaim
The Claimant denies the Counterclaim on the basis that each of the Marks are inherently distinctive and/or had acquired distinctive character by the date of their registration or alternatively had done so before the date of the Counterclaim and so are not liable to invalidation under s. 47(1) TMA.
- 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