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

I have found that ‘Builder’ and ‘builder’ are descriptive terms used widely and interchangeably in the software industry as a tool to enable the creation or development of software, whether used with a further descriptor or not, since at least 2013. I am satisfied that the average consumer, who is deemed to be well informed reasonably observant and circumspect, would have known that, and would immediately perceive the Builder Word Mark as descriptive, and as such inherently unable to identify the goods and services for which the Builder Word Mark is registered (as the Defendants limit their invalidation case above) as originating from the Claimant and so distinguish them from goods or services of other undertakings, as at the registration date.

In relation to the Builder Home Mark, I do not consider that the average consumer would perceive that as memorable and striking merely because of the stylisation of the capital ‘B’ as the Claimant submits. Although I have found that the average consumer pays a higher degree of attention because he is looking to create something of value, I consider the level of stylisation in the blocked-in ‘B’ and conventional font to be weak and not memorable even to the reasonably observant average consumer. The wide-ranging and long use of ‘Builder’ as a descriptive term before the Claimant registered the Builder Home Mark limits the capacity of such weak and unmemorable stylisation inherently to distinguish the Builder Home Mark from the Builder Word Mark, in my judgment, as I consider that the average consumer would still immediately perceive it as descriptive. Accordingly I consider the Builder Home Mark is also inherently unable of acting as a mark of origin to identify the goods or services for which it is registered (as the Defendants limit their case above) as being those of the Claimant and distinct from goods or services of other undertakings, as at the registration date.

In terms of the parts of the specifications that Mr Lomas has emphasised, Mr Howe in closing submissions indicated that even if I was not with him on the question of inherent distinctiveness, he objected to the second marked passage being excised from the Class 9 specification for each of the Builder House Mark and Builder Word Mark, because he submits that there is no evidence that they are descriptive of “downloadable software for content management, content creation, content aggregation…and content searching”. Similarly, he objected to the excision of the last passage from Class 42 to the extent it relates to content management, creation, publishing etc. I am satisfied that depending on the content and functionality of the apps created, development of apps could fall within this category and that it is appropriately emphasised. I would also draw the Defendants’ attention to “software design enabled by artificial intelligence” which has not been emphasised, but I think should be.