Engineer.ai Global Ltd v (1) Appy Pie Ltd (2) Appy Pie LLP [2024] EWHC 1430 (IPEC)
On 19 June 2024, HHJ Melissa Clarke (sitting as a Judge of the High Court) dismissed a trade mark infringement claim brought by Engineer.ai against Appy Pie in reliance on a number of BUILDER formative trade marks.
Engineer.ai and Appy Pie are competitors in the “code-free” app-building space. The central issue in the action was the extent to which Engineer.ai should have the benefit of a monopoly right in the word BUILDER (and a consequent entitlement to restrain its use by others) OR whether the word BUILDER was at all relevant times descriptive of app-building services (and should therefore be available for use by all traders in the relevant sector).
Specifically, Engineer.ai’s infringement claim related to two categories of alleged use of its trade marks, namely: (i) the use of the word “builder” by Appy Pie on its website in relation to its own code-free services; and (ii) a video posted to LinkedIn by Appy Pie which featured a number of code-free app-builders (including both the parties’ services) was said to constitute misleading comparative advertising.
As regards the category one allegations, the Judge found that the BUILDER trade marks were neither inherently distinctive, nor did they have any acquired distinctive character (not least as much of the evidence led by Engineer.ai post-dated the date of the claim form and could therefore not be relied on). As for the category two allegation, the Judge rejected the contention that the video was comparative advertising at all. The infringement claim therefore failed.
Appy Pie counterclaimed that the trade marks were liable to be revoked insofar as they were descriptive or highly allusive of the goods and services for which they were registered, and this was successful.
In applying the principles set out by the Court of Appeal in Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358, the Judgment confirms the requirement for a proprietor to file clear, cogent, and credible evidence if it seeks to advance a case on acquired distinctive character. As noted by the Judge, Engineer.ai’s written evidence was:
“…problematic in a number of ways which she fairly accepted in cross-examination, particularly in relation to financial and other figures […] and so I am unable to accept much of the financial or quantitative information as reliable. It also suffered from a lack of support from documentary evidence which she fairly accepted could have been obtained or provided and disclosed, but was not [...] This means that much of her evidence, particularly that which came from other sources such that she could not directly attest to them, could not be validated or tested. Under Mr Lomas’s cross-examination she, again fairly, made a number of concessions and further admissions such that her oral evidence was quite different from what she presented in her witness statement, and overall less supportive of the Claimant’s case. Accordingly although I accept Ms Gupta as an honest and credible witness and one who gave reliable evidence on matters within her own direct knowledge, much of the evidence she puts before the Court is not reliable.”
Andrew Lomas appeared at trial for the Defendants, instructed by Reynolds Porter Chamberlain LLP.
View Judgment