Intellectual Property Enterprise Court

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

Fecha: 19-Jun-2024

The Defendants’ defence to infringement

The Defendants’ defence to infringement

18.

In their Amended Consolidated Defence and Counterclaim, the Defendants aver that:

D2 trades in development and support of software under the brand name Appy Pie and is responsible for the content of the Appy Pie Website and for products and services provided through the Appy Pie Website;

ii)

D1 merely provides payment processing services to D2 in relation to payments made to it in the UK and EU, as is made clear in D2’s terms of use on the Appy Pie Website, and do not “trade together” as the Claimant claims;

iii)

of the acts complained of, in each case D2 is the entity which has carried them out and D1 has not;

iv)

D1 is not responsible for the content of the Appy Pie Website or the LinkedIn Post; and

D1 is, accordingly, not a joint tortfeasor in relation to any infringement that the Court may find D2 is liable for.

19.

In relation to Category 1 infringement allegation, the Defendants admit that the Appy Pie Website is targeted at, inter alia, the UK and that Screenshots 1, 2 and 3 show the use of the signs complained of. The Defendants submit that only D2 has used the signs complained of and that none of the uses:

comprise use of BUILDER solus;

ii)

would be understood as having trade mark significance or constitute use of a trade mark, but are generic or descriptive use; or

iii)

amount to trade mark infringement under s.10(2) or s.10(3) TMA.

20.

It further pleads that the Claimant has always traded under the name Builder.ai and never Builder solus, and denies that the public are likely to recognise Builder as a brand name as it is so generic and descriptive. It denies that Builder would be perceived as the Claimant’s house or umbrella brand for a family of marks.

21.

In relation to the Category 2 infringement allegation, the Defendants admit that the LinkedIn Post was posted to D2’s LinkedIn page, and incorporates the Builder.ai Figurative Mark and the Builder.ai Word Mark. They deny that the LinkedIn Post (and the video embedded within it) is targeted at the UK. They deny that the video can be characterised as advertising at all, let alone comparative advertising and in any event say is not misleading and does not denigrate the Claimant’s product. If, contrary to its position, the Court finds that it is comparative advertising and targeted at the UK, it avers, therefore, that it complies with, and is permissible under, the 2008 Regulations.

22.

To the extent that D2’s use might be considered infringing contrary to its case, it relies on a defence under s.11(2)(b) and (c) TMA, because: (i) such use is descriptive and/or necessary to indicate the intended purpose of D2’s product; and (ii) use in the LinkedIn Post is permitted referential use.