Engineer.AI Global Limited v Appy Pie Ltd & Anor
Decision date: 19 June 2024
Neutral citation: [2024] EWHC 1430 (IPEC)
Overall AI summary confidence: high
Short overview
This short overview is intended to summarise the case, issues and outcome so far as they are supported by the judgment.
AI confidence in this short overview: high
Engineer.AI sued Appy Pie for trade mark infringement over marks featuring "BUILDER"/"BUILDER.AI" used in relation to no-code/app-builder products; the judge held that the common element "builder" (and variants like "builder.ai") was descriptive/generic in the relevant sector and lacked inherent distinctiveness. The claimant failed to prove acquired distinctiveness or reputation in the UK, so its infringement claims based on website product names and a LinkedIn post were dismissed. The defendants’ counterclaim succeeded: the registered Marks were declared invalid for lack of distinctive character to the extent pleaded. The court also found the LinkedIn post was not targeted at the UK and did not decide further issues such as joint tortfeasorship.
Ratio decidendi
This summary is intended to identify the ratio decidendi, meaning the legal reasons for deciding and the binding part of the decision.
AI confidence in this ratio decidendi summary: high
Where a common element of claimed family marks is descriptive and non-distinctive in the relevant field, that element cannot support a family-of-marks theory to enhance likelihood of confusion; and a claim of acquired distinctiveness or reputation requires reliable, contemporaneous quantitative evidence (sales, market share, targeted marketing metrics)—absence or unreliability of such evidence undermines the claim.
Obiter dicta
This summary is intended to identify obiter dicta, meaning observations made by the way that were not necessary to deciding the case and are not binding.
AI confidence in this obiter dicta summary: medium
The judgment suggests that weak stylisation (e.g. simple capitalization or a minor blocked-in letter) will not rescue an otherwise descriptive word, and that elements like ".ai" may be perceived as a top-level domain or allusive reference to AI and thus will not necessarily confer distinctiveness where the remainder of the sign is descriptive.