Engineer.AI Global Limited v Appy Pie Ltd & Anor

Words commonly used in the software industry to describe tools for creating applications are descriptive and may lack distinctive character, even when capitalised or combined with weak stylisation. A family of trade marks cannot be relied on to create a likelihood of confusion where its common element is itself non-distinctive.

Acquired distinctiveness requires reliable evidence assessed as a whole, including market share, intensity, geographical extent and duration of use, promotional investment, and the proportion of the relevant public identifying the goods or services with one undertaking. For website or social-media targeting, the question is whether the average consumer would regard the material as directed at consumers in the United Kingdom.

The claimant owned seven UK trade marks incorporating BUILDER, BUILDER.AI and related expressions for software and technology services. It alleged that the defendants infringed the marks by using BUILDER descriptively in names for no-code software tools and by referring to BUILDER.AI in a LinkedIn post listing no-code app-building platforms.

The defendants counterclaimed that the marks were invalid for lack of distinctive character and that their uses were descriptive. The trial concerned liability and the counterclaim. The central issues were whether the marks were inherently or distinctively distinctive, whether they had acquired distinctive character or reputation in the UK, whether the defendants’ uses were trade mark uses, and whether the LinkedIn post was targeted at UK consumers.

1. Disposition. The infringement claims were dismissed. The counterclaim succeeded to the extent pursued: all seven marks were invalid for lack of distinctive character in the specified parts of their specifications.

2. Distinctiveness. “Builder” and “builder” had been widely and interchangeably used in the software industry since at least 2013 to describe tools enabling software creation or development. The average consumer would therefore perceive BUILDER as descriptive. Weak stylisation of the capital B did not materially alter that perception.

3. BUILDER.AI was likewise descriptive. The average consumer would either disregard “.ai” as a domain element or understand it as allusive of artificial intelligence and an autonomous software-building tool. BUILDER STUDIO PRO, BUILDER NOW and BUILDER CLOUD added no material distinctive character because their additional words were generic, descriptive or laudatory.

4. A family of marks could not be established where the common component was non-distinctive. The common component had to be a distinctive element capable of identifying commercial origin.

5. The claimant’s evidence did not establish acquired distinctive character or reputation. The sales and advertising figures were contradictory or unsupported, and the evidence lacked reliable information about market share, UK reach, intensity of use and the proportion of consumers identifying the marks with the claimant.

6. The defendants’ use of BUILDER in expressions such as “App Builder” and “Android App Builder” was ordinary descriptive use, not use as an indication of origin. The s.11(2)(b) defence would also have applied.

7. Applying Lifestyle Equities, the LinkedIn post was not targeted at UK consumers. It was hosted on LinkedIn, was not connected to a purchasing facility, contained no clear UK solicitation, was in English, displayed only one UK price among six US-dollar prices, and had very limited UK reach.

8. The court did not determine the remaining infringement issues, including comparative advertising, due cause and joint tortfeasorship, because the claims failed on earlier grounds.