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

I have found that the average consumer would immediately perceive the Builder Word Mark and Builder Home Mark as descriptive, and as such lacking in distinctive character. The only difference between those marks and the Builder.ai Word Mark and Builder.ai Home Mark respectively, is the ‘.ai’ element. In my judgment, the average consumer in the context of the software industry at the time of the registration of the marks, in December 2021, is likely to be aware first, that ‘ai’ was short for artificial intelligence, and second, that it was used as an adjective for anything autonomous, as the Claimant itself explained on its own website several years earlier.

Mr Howe submits that these marks are distinguished by joining two words in what is not a descriptive phrase previously recognised. However, they are joined by a ‘dot’, and in my judgment, the average consumer at the relevant time would perceive this as a top-level domain, not a phrase. I am satisfied that at least a class of the well informed and reasonably observant and circumspect average consumer (being adults, not children) would be familiar with the use of allusive domains, such as ‘.tv’, which although a country code top-level domain for Tuvalu, has been widely used in the television industry since the mid-1990s and has since been categorised as generic. Accordingly, I accept the Defendants’ submissions that the average consumer is likely either to ignore the ‘.ai’ element, particularly where it is used in a URL where his focus will be only on the descriptive word ‘builder’, or if he does not ignore it, perceive it as a top-level domain, but one which is allusive of artificial intelligence and not as the country code top-level domain for Anguilla (as in fact it is). In the latter case I am satisfied that he will easily recognise it as being descriptive of a builder, i.e. a tool to enable the creation or development of software, which utilises artificial intelligence to introduce an autonomous element to the build. As such, I am satisfied that the Builder.ai Word Mark and Builder.ai Figurative Mark are both inherently unable to identify the goods and services for which they are 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.