ChainGPT succeeds in UKIPO challenge

The UK Intellectual Property Office (UKIPO) has issued a notable decision in a dispute between OpenAI OpCo, LLC ("OpenAI") and ChainGPT LLC ("ChainGPT") addressing the registrability of the mark ChainGPT, as well as the validity of OpenAI's GPT and CHATGPT trade mark registrations.

The decision considers whether GPT and CHATGPT function as indicators of trade origin, or whether they are descriptive terms that should remain available for other businesses operating in the AI sector to use.

The dispute

ChainGPT applied to register the mark CHAINGPT for various AI-related software and technology services in classes 9 and 42. OpenAI opposed the application relying on several earlier trade mark registrations, including GPT, GPT-3, GPT-4 and CHATGPT alleging likelihood of confusion, reputation based harm and passing off.

In response, ChainGPT launched invalidation actions against OpenAI's registrations for GPT and CHATGPT registrations, arguing that the marks lacked distinctive character and were descriptive because "GPT" is commonly understood as an abbreviation for "Generative Pre-trained Transformer", a type of AI architecture.

The proceedings were consolidated and the UKIPO considered two key issues:

1. Whether ChainGPT should be refused registration because of OpenAI's earlier rights; and
2. Whether OpenAI's GPT and CHATGPT registrations should remain registered.

The invalidity actions

The most significant aspect of the decision concerned the challenged brought against OpenAI's registrations.

ChainGPT argues that GPT would be understood by the relevant public as a descriptive term rather than a trade mark. The hearing officer reviewed dictionary definitions, technical publications and industry materials which used GPT as an acronym for "Generative Pre-trained Transformer". The decision placed particular weight on how AI specialists and those working within the technology sector would understand the term.

The judgment concluded that GPT described a characteristic of the relevant goods and services and should remain available for use by traders operating in the AI sector. As a result, the GPT registration was found to be descriptive and devoid of distinctive character.

The UKIPO reached a similar conclusion in relation to CHATGPT. The hearing officer considered that consumers would naturally separate the mark into the components "CHAT" and "GPT".

The word "chat" was found to describe the conversational functionality of chatbot technology, whilst "GPT" described the underlying AI technology. Taken together, CHATGPT was held to describe a chatbot operating using generative pre-trained transformer technology.

Although CHATGPT had achieved extremely rapid public recognition following its launch in late 2022, it was held that the evidence did not demonstrate acquired distinctiveness by the relevant date. The mark had only been in use for a matter of weeks prior to that date and the evidence did not sufficiently show that consumers perceived CHATGPT as a badge of origin rather than a description of the technology.

Therefore, both the GPT and CHATGPT marks were invalidated.

The opposition

Following the invalidation of GPT and CHATGPT, OpenAI could only rely on its remaining registrations for GPT-3 and GPT-4 in opposing the ChainGPT application.

The UKIPO accepted that the parties' goods and services were identical or highly similar. However, it found there was no likelihood of confusion between GPT-3/GPT-4 and ChainGPT.

A key factor was that GPT was held to be descriptive in the AI field. The UKIPO considered that the common element "GPT" would therefore carry limited trade mark significance, particularly among specialist users familiar with AI technology. The additional element "Chain" was sufficient to give ChainGPT a different overall impression.

The opposition consequently failed on all grounds.

Key takeaways for brand owners

This decision serves as a reminder of the challenges involved in protecting technology-related terminology through trade mark registrations.

Businesses operating in emerging sectors often seek protection for terms closely associated with new technologies. However, where a term describes the underlying technology or a key characteristic of the goods and services, obtaining and maintaining trade mark protection can be difficult.

The decision also highlights the importance of selecting marks that are inherently distinctive from the outset. Whilst extensive use may sometimes enable descriptive marks to acquire distinctiveness, the evidential burden is high and businesses should not assume that commercial success alone will be sufficient.

For AI companies in particular, the decision demonstrates that terminology widely used within the industry may be vulnerable to challenge, even where it is closely associated in practice with a single business.

Looking ahead

Given the commercial significance of AI products and the widespread recognition of the ChatGPT platform, this decision is likely to attract considerable attention across the technology and intellectual property sectors. The case also raises broader questions about how trade mark law should apply to rapidly developing technologies and whether businesses can obtain exclusive rights in terminology that comes to describe the technology itself.