Descriptive words I: what degree of stylisation makes them registrable?

What's the issue?

• Several UK trade mark registrations for BUILDER marks (in word only and stylised forms) have been held invalid for app development and related services by the High Court (IPEC) due to lack of inherent distinctiveness. 
• Conversely, the High Court (IP list) has deemed registrations for SHORTSTV (in logo form) for audiovisual content sufficiently inherently distinctive and valid. 
• While it's arguable that the SHORTSTV registrations are marginally more distinctive than the BUILDER ones, the differences are minor. 
• Do these cases help illustrate the degree of stylisation required to make a descriptive word registrable or do they merely show that the degree of distinctiveness required is a matter of opinion on which experienced practitioners can disagree? 
• Given that neither registration was held to be infringed, it perhaps does not matter in practice. What is clear, however, is that maintaining and enforcing descriptive marks is never easy.
• Here, we consider the BUILDER case in detail. We consider the SHORTSTV case here.

Want to know more about the BUILDER case?

The claim

The claimant and defendants were both involved in the simplification of app development so that users can build or create an app without having to carry out coding. 

The claimant's used and had registered various marks containing the word BUILDER in the UK for app development services. This included BUILDER, BUILDER AI, BUILDER STUDIO PRO (all word only) and stylised versions of those marks. The claimant alleged that it had a 'family' of BUILDER registrations. 

The claimant sued the defendant for trade mark infringement in respect of the defendants' various uses of BUILDER and BUILDER AI in relation to app development in the UK. It relied on double identity, likelihood of confusion and unfair advantage/detriment claims. 

The infringement claims included an allegation that the defendants targeted the UK with their use. There was also an allegation that a LinkedIn post by the defendants which reproduced the claimant's BUILDER.AI logo was a comparative advert which amounted to an infringement by failing to comply with regulation 4 of the Business Protection from Misleading Advertising Regulations 2008/1276. 

The defendants counterclaimed for invalidation of all the prior registrations asserted against it on the basis of both descriptiveness and non-distinctiveness. They also asserted that they had only ever traded under the name APPY PIE and that any use of the word BUILDER was purely descriptive.

Inherent distinctiveness

The Court found both the words ‘builder’ and 'cloud' to be descriptive terms used widely in the software industry to describe a tool to enable the creation or development of software (builder) and a product which involves virtual rather than local hosting of data (cloud). 

Judicial notice was taken of the fact that the word 'cloud' has been so used and understood widely amongst the general public, and by implication by the average consumer in this case, since at least 2012, when Apple launched iCloud. 

Lastly, the inclusion of a 'dot' in some of the 'family of marks' would be perceived as a top-level domain reference, not a phrase. 

The stylisation of some of the marks did not confer sufficient distinctiveness on the marks as a whole to make them registrable. The judge said, "I consider the level of stylisation in the blocked-in ‘B’ and conventional font to be weak and not memorable even to the reasonably observant average consumer." This was particularly so given the weakness of the BUILDER word.  

Acquired distinctiveness & reputation

The court found that the claimant's BUILDER 'family of marks' had not acquired distinctiveness through use (or established a reputation). The judge gave a detailed critique of the evidence filed by the claimant which reiterates the importance of following the steps to prove acquired distinctiveness in the UK. Those included findings that there was:

• no reliable evidence of the UK sales or market share held by the goods or services bearing any of the marks 
• very little reliable evidence of the amount invested in promoting any of the marks
• limited evidence about how intensive and geographically widespread the use of the marks has been in the UK
• little evidence of the relevant classes of persons identifying the goods and services as coming from the claimant and 
• only one relevant award in the UK in the relevant period.

On whether the claimant's registrations had a reputation, the judge stated that "I have no reliable evidence on market share, very little reliable evidence on the size of investment in the Marks in the UK, and insufficient information on the intensity and geographical extent of the use of the Marks, and the duration of use is even shorter than for assessing acquired distinctiveness".

Irrelevant evidence

One of the claimant's weaknesses was filing irrelevant evidence. For example, many of the uses relied on appear to have taken place abroad or relate to events abroad. Certain LinkedIn posts referred to events abroad. 

Evidence must be considered as a whole

The most compelling evidence related to the use of the BUILDER.AI mark in advertising for the Rugby League (sponsorship) and Platinum Jubilee campaign. However, that evidence in and of itself was not enough to compensate for the lack of other evidence. 

The judge pointed to a "wasted opportunity" by failing to file enough evidence from the claimant's website and for press coverage of the BUILDER.AI mark. The judge made an important statement later about 'stepping back and taking all matters into account' that highlights how critical it is to view any claim in the round and to ensure that the basic requirements for proving enhanced distinctiveness/reputation are met. 

Infringement

Despite the finding that all of the marks alleged to be infringed were invalid, the judge went on to consider whether (if he was wrong on that) they would have been infringed.

Family of marks

The claimant alleged that it had a 'family' of BUILDER marks such that any use of BUILDER (in a similar format) by a third party would infringe.

The decision makes clear that a family of marks cannot be established for the purposes of supporting the existence of a likelihood of confusion when the common component (‘Builder’ in this case) is itself a non-distinctive, descriptive word. If the claimant were to successfully show a 'family of marks' then it would have been necessary for BUILDER to be a “distinctive element” (inherently or through use) to which a differentiating graphic or word element could have been added. 

Targeting

The claimant had alleged that certain uses of the word BUILDER by the defendant on overseas websites nonetheless targeted UK consumers (and therefore infringed). 

Here, the judge reiterated that it is not necessary to establish that a foreign trader had the subjective intention of targeting consumers in the UK for targeting to be found, but if a subjective intention is established, then it can “ease the path to a finding that the foreign trader’s activities, viewed objectively from the perspective of the average consumer, were and are targeted at consumers in the UK”.

Comparative advertising 

Had the claimant's registrations been valid, there would have been no infringement by the defendant based on an illegal comparative advert in a LinkedIn post. The LinkedIn post (which comprised a video called “7 of the best no code app builders in 2022”) merely provided information (education) on the claimant's and defendants' products; it did not compare the products.

What does this mean for you?

• This case is another which illustrates the difficulty maintaining and enforcing marks containing descriptive/non-distinctive elements. It's important to note too that stylisation in and of itself is not always enough to lift a mark over the distinctiveness threshold. Marketing teams will need to take note of the uphill struggle enforcing such rights.
• It also underscores the significance of submitting substantial evidence to establish enhanced distinctiveness through use (and reputation). The court will not do the work of the claimant for it. 
• The implication in this case was that the claimant's mark might well have reached one or other of these thresholds but the evidence was not there. Given how difficult it is to supplement evidence on appeal in the UK, the claimant is unlikely to be able to rectify the position in any appeal.