On 11 March 2025, the Intellectual Property Enterprise Court (IPEC) issued its decision in Babek International Ltd v Iceland Foods Ltd ([2025] EWHC 547 (IPEC)).

Facts

The claimant, Babek International Limited (Babek), owned a UK trade mark registration for the following device (the “Mark”), registered for goods and services including specified food and drinks in Class 29:

The word depicted in the Mark was BABEK, which was the word "kebab" spelled backwards.

The Mark was described in the registration as "Gold oval with embossed BABEK writing. Colour Claimed: Gold, black."

Babek brought a trade mark infringement claim against Iceland Foods Limited (Iceland), a well-known supermarket chain. Iceland denied infringement and counterclaimed that the registration was invalid under section 47(1) of the Trade Marks Act 1994 (the "TMA"), as the Mark was registered in breach of section 3(1) TMA. 

Iceland applied for summary judgment on its counterclaim.

Relevant law

Under sections 3(1) and 47(1) TMA, a sign shall not be registered as a trade mark, and a registration may be declared invalid, if the requirements in section 1(1) TMA are not met. 

Those requirements are that the sign is capable: 

1. of being represented in the register in a manner which enables the registrar, competent authorities and the public to determine the clear and precise subject matter of the protection sought/obtained; and 
2. of distinguishing the goods or services of one undertaking from those of other undertakings.

In Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt, the Court of Justice of the European Union set out various criteria relevant to interpreting the requirements on which s1(1) TMA is based – namely, that the representation of the mark is "clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

Decision

The Intellectual Property Enterprise Court (IPEC) dismissed the application, holding that the Mark was validly registered as there was no ambiguity or inconsistency, and all of the Sieckmann criteria regarding clarity and precision were satisfied.

The IPEC recalled the following key principles from its review of the Sieckmann criteria and other case law:

• The clarity and precision of a sign is assessed by reference both to the visual representation and the verbal description on the registration, taken together; neither is superior to the other.
   
• The categorisation of a trade mark on the registration (e.g. as a figurative mark) was often the most useful starting point in the assessment.
   
• The sign must be perceived both unambiguously and uniformly. The latter meant that a sign could not take on a "multitude of forms", preventing identification of the precise nature of the mark.
   
• Where a mark contained colour(s), but was not a ‘colour per se’ mark (i.e. a mark which solely comprised one or more colours), it wasn’t always necessary to identify the precise hue of a particular colour. The need for precision as to hue was a matter of fact and degree and would depend on the extent to which the other elements of the mark served to make that mark capable of distinguishing.

Applying these principles, the IPEC made the following key findings:

• The Mark’s stated categorisation (a figurative mark) was a useful starting point. There was nothing inconsistent between this statement and the visual representation of the Mark, which showed a 2D mark with 3D visual effects.
   
• There was no inconsistency between the Mark’s categorisation as a figurative mark and the written description. "Embossed BABEK writing" could and would have been understood to mean that BABEK was represented with an embossed appearance, including shadows. While the description did not mention the embossed appearance for the studs, border and the textured background, this did not pose a problem, as the description had not conclusively ruled this out. The reader would have understood that the embossing effect was principally, but not exclusively, significant to the BABEK writing. 
   
• The Mark did not become ambiguous because of the reader’s uncertainty about whether the studs, border and textured background should appear embossed. Such an argument suggested that a written description must always describe what is shown in the visual representation "in every particular", with no detail left unsaid. There was no reason why the competent authorities and the public should be taken to consist of "anxious pedants". A reasonable reader would understand that the written description would cover the important features, and may leave out further and minor details appearing in the visual representation.
   
• Iceland’s other arguments as to a lack of clarity and precision should be dismissed:
  • Iceland’s submission that the visual representation of the Mark showed an ellipse, whereas the written description stated it was an oval, was an example of "fairly high grade pedantry".
     
  • The discrepancy between the oval being described as gold but with the colours claimed being both gold and black, was resolved by the fact that the description stated that the word BABEK was embossed. Creating the embossed effect involved the use of shadows, which accounted for the reference to black.
     
  • The claim that there was no true black in the Mark was true, but only when considered "over-literally". There was no inconsistency, as a reasonable reader would understand that what was meant by black were the dark shadows, which were "approximately black" and could not sensibly be described as gold in colour.
     
  • The claimed presence of 25 different pantone hues of gold and 18 hues of black did not undermine the colours of "gold" and "black" claimed by the Mark. Whereas the use of pantone numbers was likely to be important with "colour per se marks", this may have less importance for other types of colourful marks, such as colourful figurative marks. In this situation, the precise hue (and therefore any variation in hue) was unlikely to play a significant role in making the Mark capable of distinguishing trade origin, or of otherwise satisfying the Sieckmann criteria. It was therefore not necessary for the competent authorities or the public to be informed of pantone numbers (which, in this case, would have been an unhelpfully long list).
     
  • The absence of pantone numbers did not mean the Mark had a multitude of forms or was ambiguous. The Mark, as visually represented, had one single form, subject to minor variations in hue, which would not lead the reasonable reader to think there was a lack of clarity or precision. The Mark, as shown, also satisfied all of the other Sieckmann criteria.
     
  • The argument that the verbal representation of the Mark was inconsistent with the written description "would need an assumed degree of pedantry" by the competent authorities and the public. If this were to be required by law, it "would make the trade mark system unworkable".

Comment

While the IPEC’s judgment at first appears to turn on rather subjective points, it is ultimately a helpful decision that reinforces the essential function of a trade mark (distinguishing commercial trade origin), and prioritises that function over "pedantic" interpretations of a registration.

The judgment carefully reiterates key principles from the case law on the requirements of clarity and precision. In particular, a trade mark must be capable of being perceived unambiguously and uniformly, with no prospect of a multitude of different forms that would undermine its essential function of distinguishing the goods or services of its owner from those of another origin. 

Most helpfully, the IPEC’s decision shows that the courts are not afraid to throw shade on overliteral and "pedantic" arguments over compliance with section 1(1) TMA. The most effective arguments will be those which go right to the heart of a mark’s capability of graphical representation on the register and of distinguishing commercial trade origin.