Jurisdiction(s):
United Kingdom

IPEC (England and Wales): ‘Builder’ descriptive for no-code app-building; Engineer.ai trade marks invalid; acquired distinctiveness, evidence and family of marks clarified (Engineer.ai v Appy Pie)

Published on: 03 July 2024

Published by a LexisNexis IP expert

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Article summary

Engineer.AI Global Ltd v APPY PIE Ltd and another company [2024] EWHC 1430 (IPEC) What are the practical implications of this case?

This decision is highly significant for advisers guiding clients in the AI and technology space on trade mark strategy and protection. Generic sector terms (for example, ‘Builder’), even when paired with tech-related suffixes such as ‘.ai’ or ‘Pro’, or given only slight stylisation, are liable to be treated as descriptive and lacking inherent distinctiveness. Advisers should caution clients against choosing such terms as their brands. Distinctiveness is always assessed from the standpoint of the relevant public for the goods or services associated with the mark.

The ruling further highlights the vital importance of the quality and consistency of evidence in trade mark matters, particularly where a claimant must establish acquired distinctiveness or reputation. Engineer.ai’s evidence was found wanting in several respects. Material filed by the claimant conflicted with its pleadings and was not backed by verifiable, contemporaneous documents (dated before the Relevant Date) to substantiate the claimant’s contention that it had acquired distinctiveness in its ‘Builder’ marks. Practitioners should urge clients to maintain detailed, verifiable records of brand...

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