EasyGroup Limited v Nuclei Limited & Ors
[2023] EWCA Civ 1247
Engineer.AI Global Limited v Appy Pie Ltd & Anor
19 June 2024
[2024] EWHC 1430 (IPEC)
High Court
Two app-building companies fought over the word "Builder." The judge decided the word was too common and descriptive to be a protected trademark for one company, so the lawsuit was dismissed.
Key Facts
- •Engineer.ai Global Limited (Claimant) sued Appy Pie Ltd and Appy Pie LLP (Defendants) for trade mark infringement.
- •The dispute centered on the Defendants' use of "Builder" in their no-code app development products and services.
- •The Claimant owned seven UK-registered trade marks containing "Builder."
- •The Claimant alleged infringement under sections 10(2)(b), 10(3), and 10(1) of the Trade Marks Act 1994.
- •The Defendants counterclaimed that the Claimant's marks were invalid.
- •The trial was split into liability and quantum phases.
Legal Principles
To establish a family of marks, earlier marks must reproduce the same distinctive element with additions, or repeat a prefix/suffix from an original mark.
W3 Ltd v easyGroup Ltd [2018] EWHC 7 (Ch)
A trade mark must identify goods/services as originating from a particular undertaking.
Société des Produits Nestlé SA v Cadbury UK Ltd [2014] EWHC 16 (Ch)
For acquired distinctiveness, a significant proportion of consumers must perceive goods as originating from a particular undertaking due to the mark's use.
Société des Produits Nestlé SA v Cadbury UK Ltd [2016] EWHC 50 (Ch)
Relevant factors for assessing reputation include market share, intensity/extent/duration of use, and investment in the mark.
T-47/06 Nasdaq
For trade mark infringement, a sign must be identical or similar to the mark, leading to a likelihood of confusion.
Trade Marks Act 1994, s. 10
Comparative advertising is permitted only if it's not misleading, compares like-with-like, and doesn't discredit competitors.
Business Protection from Misleading Marketing Regulations 2008, reg. 4
A trade mark is invalid if it's devoid of distinctive character or consists exclusively of descriptive signs.
Trade Marks Act 1994, s. 3(1)(b), (c)
Website targeting for trade mark infringement is assessed from the average consumer's perspective.
Lifestyle Equities CV v Amazon UK Services [2024] UKSC 8
Joint tortfeasorship requires knowledge of the essential facts making the acts wrongful.
Lifestyle Equities CV v Amazon UK Services [2024] UKSC 8
Outcomes
Claimant's claims for trade mark infringement dismissed.
The Claimant's marks were found to be invalid due to lack of inherent or acquired distinctive character. The Defendants' use of "Builder" was deemed descriptive and not infringing.
Defendants' counterclaim succeeded.
All of the Claimant's marks were declared invalid to the extent specified in the judgment because they lacked distinctive character.