Her Honour Judge Melissa Clarke's June 2024 judgment highlights the challenges that can arise from using generic terms as trade marks.
In Engineer.Ai Global Ltd v Appy Pie Ltd & Anor, HHJ Clarke found seven UK registered trade marks in classes 9, 36 and 42, all of which included the word Builder, to be invalid for the relevant goods and services due to lack of distinctive character. She also found they were not infringed.
The marks were registered by software developer Engineer.ai and were asserted against two companies that develop and supply software.
Engineer.ai alleged that the marks were infringed on the Appy Pie website in references to the defendants’ products. It also claimed that the Builder.ai marks were infringed by the use of Builder.ai in a video on LinkedIn.
Generic term = trade marks revoked
HHJ Clarke found that the average consumer is anyone who wishes to create an app without coding and they would have a higher-than-average level of attention.
The judge said that ‘builder’ was a generic and descriptive term used widely in the software industry since at least 2013, including by the claimant. She was satisfied from the evidence that ‘Builder’ with an upper-case B was also a descriptive term.
She therefore found that all the marks were not inherently distinctive. This included those that had stylised features and/or additional words such as Studio Pro, Now and Cloud.
Turning to to the Builder.ai marks, the judge said the average consumer would either ignore the .ai element or perceive it as a top-level domain allusive of artificial intelligence.
No acquired distinctiveness
The Claimant also argued that the marks had acquired distinctiveness through use. But the judge said that the evidence in support of this was either unreliable, limited or not relevant.
She concluded:
‘I find that none of the Marks have acquired distinctiveness. The evidence is simply lacking.’
For the same reasons, she was not satisfied that the marks had a reputation in the UK or enhanced distinctive character.
No infringement
As the defendant had only used Builder on its website with preceding words such as App and Android as an ordinary descriptive word, there was no infringement even if the marks had been valid.
The claim regarding infringement on the LinkedIn post also failed as the judge found that the average consumer in the UK would not consider it to be directed at them.
What does this mean?
The case is a reminder of the risks associated with using generic terms as trade marks, including terms that are generic in a specific market or sector.
While such terms are often favoured by marketers as they resonate with consumers, they can be hard to protect as trade marks.
Any company wishing to use trade marks that include or comprise generic terms should seek advice on distinctiveness, use as a trade mark and how to avoid genericisation. This may include investing in branding or advertising campaigns, publishing prominent legal notices and taking early enforcement action where appropriate.
Please get in touch if you would like more detailed advice.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com