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

The Defendants counterclaim that each of the Marks is and always has been invalid in respect of the goods and services for which it is registered in classes 9 and 42. All seven Marks are challenged for non-compliance with s.3(1)(b) and s.3(1)(c) TMA and the Builder Word Mark and Builder House Mark are additionally challenged under s.3(1)(d) that they “consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade”. At trial, Mr Lomas submits that although it relies on s. 3(1)(b), it does so as a backstop and that reliance does not extend the scope of the Defendants’ counterclaim under s. 3(1)(c) or (d).

The Counterclaim was also narrowed in scope at trial. Mr Lomas in his skeleton and opening submissions said that the Defendants were not seeking invalidation of the entirety of the Marks but were in each case seeking to remove from the relevant specification those parts indicated by him in his skeleton argument (and which specifications and indications I set out in the judgment below), which the Defendants submit are purely descriptive or highly allusive.