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

In my judgment, the average consumer who is well informed, reasonably observant and circumspect, and aware of popular suffixes in the naming of software products, will perceive the Builder Studio Pro Mark as having no material additional distinctive character to the Builder Mark. These are generic, descriptive words which I am satisfied would be perceived by the average consumer as lacking distinctive character alone or together. STUDIO adds nothing to BUILDER save that it might suggest to the average consumer that there are a number of different tools in the variant, and PRO is generically used to indicate, as was Mr Girdhar’s evidence, that it is a variant which will appeal to business or professional users or those who need some additional functionality or features, which I am satisfied the average consumer will know, being well informed. I accept the Defendants’ submission that the average consumer would consider the Builder Studio Pro Mark to do nothing more than designate the kind, intended purpose and broad characteristics of the goods and services, and is therefore descriptive and non-distinctive. I find that it is inherently unable to identify the goods and services for which it is registered (as the Defendants limit their invalidation case) as originating from the Claimant and so distinguish it from goods or services of other undertakings, as at the registration date.