Intellectual Property Enterprise Court

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

Fecha: 19-Jun-2024

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?

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?

Issue 15: Are any of the Marks devoid of inherent distinctive character?

Issue 16: Have any of the Marks acquired distinctive character through use?

Inherent distinctiveness

103.

The Claimant’s case is that all the Marks are inherently distinctive. Mr Howe in closing submits that if one were to rank them on an ascending scale of inherent distinctiveness, then: the Builder Word Mark would be at the low end of the scale, but he submits just enough to be inherently distinctive; the Builder Home Mark is more capable of being distinctive, particularly because of the blocked in initial letter ‘B’, which is not just in a particular font, but catches the eye; Builder.ai Word Mark is next, with additional capacity to distinguish by joining two words which is not, as such, a descriptive phrase that is previously recognised, and then the Builder.ai Figurative Mark because the stylisation further adds to the capacity to distinguish.

104.

The Claimant further submits that:

the Builder Home Mark, the Builder.ai Figurative Mark, the Builder Now Mark and the Builder Cloud Mark cannot be equated just with the words which they contain, since they have the memorable and striking feature of the blocked in initial upper-case ‘B’;

ii)

it is wrong to strip down those of the Marks that contain phrases (by which it means all of them, save for the Builder Word Mark and Builder House Mark) and treat their constituent elements in isolation, as none of those composite marks are directly descriptive of the products or services to be provided under the Marks; and

iii)

particular care needs to be taken to ensure that the current enthusiasm for generative artificial intelligence does not skew an assessment of the Builder.ai Word Mark and the Builder.ai Figurative Mark at the relevant date.

105.

The Defendants submit that the Marks are inherently non-distinctive with respect to material parts of their specifications. I will need to deal with these by mark or pair of marks, and I will determine each as I go, always bearing in mind the Claimant’s submissions already recorded.