In Babek International Ltd v Iceland Foods Ltd [2025] EWCA Civ 1341 (23 October 2025), the Court of Appeal dismissed Iceland’s appeal against the IPEC’s rejection of its challenge to the validity of Babek’s colourful figurative mark. While HHJ Hacon had wrongly applied the “capacity to distinguish” test to determine when colour hues must be specified, his interpretation of Babek’s trade mark was largely correct, in that it qualified as a sign and was capable of being represented graphically.

(The relevant law and factual background to the appeal in this case can be found in our separate piece covering the IPEC’s decision, here.)

Facts

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

The Mark’s written description stated: "Gold oval with embossed BABEK writing. Colour Claimed: Gold, black."

Babek brought a trade mark infringement claim against Iceland Foods Limited (Iceland). Iceland resisted infringement (proceedings on which remain ongoing), and sought summary judgment on its counterclaim that the Mark was invalid under section 47(1) TMA, alleging the registration did not conform with sections 1(1) and 3(1) TMA. 

The IPEC’s judgment

The IPEC (HHJ Hacon) dismissed Iceland’s application, holding that the Mark was validly registered. HHJ Hacon’s reasons included that:

1. There was nothing inconsistent between the stated categorisation of the Mark (a figurative mark) and its visual representation, as a 2D mark with 3D visual effects. Neither was the categorisation inconsistent with the written description. 
    
2. Where the description did not rule out the embossing of certain elements of the Mark, the reasonable reader’s uncertainty over that did not render the Mark ambiguous. A written description did not always need to describe every feature of the visual representation to address the concerns of "anxious pedants". 
    
3. It was true but “over-literal” to consider that there was no real black colour shown in the Mark. A reasonable reader would understand that “black” referred to the ‘approximately black’ dark shadows, which could not sensibly be described as gold.
    
4. 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, which was not a colour per se mark but a colourful figurative mark. The precise hue (and therefore any variation in hue) was unlikely to play a significant role in the Marks’ capacity to distinguish. The Mark, as visually represented, had one single form, subject to minor variations in hue.

Iceland’s appeal

Iceland appealed against the IPEC’s decision on six grounds, including that it had: 

• applied the wrong test to determine when colour hues must be specified;
• erred in law as to the effect of the categorisation given to a trade mark;
• failed to apply the principle that neither the pictorial representation or written description took precedence; and took into account irrelevant matters.

Court of Appeal’s decision

The Court of Appeal unanimously dismissed Iceland’s appeal. Arnold LJ gave the lead judgment, as he did in another ruling on trade mark registrability handed down on the same day (Thom Browne Inc & Anor v Adidas AG).

Arnold LJ agreed that HHJ Hacon had wrongly used the “capacity to distinguish” test to determine when colour hues must be specified in marks which were not colour per se marks. HHJ Hacon had used that test in J. Sainsbury plc v Fromageries Bel SA [2019] EWHC 3454 (Ch), and cited paragraphs from that case in his decision that the precise hue (and therefore any variation in hue) was unlikely to play a significant role in the Mark’s capacity to distinguish. 

Arnold LJ agreed that the application of this test was “legally erroneous”, as the three conditions in section 1(1) TMA (a sign, which is capable of being represented in the register, and which has the capacity to distinguish) were independent and cumulative. Furthermore, the “capacity to distinguish” condition was logically anterior to the conditions of whether something was a sign and was capable of representation. 

The Court of Appeal then reconsidered the issues on this ground, and yet found that the Mark still satisfied the first two conditions. 

First condition: Sign

Arnold LJ held that the Mark was a single sign, as depicted in the pictorial representation, because:

• The Mark’s categorisation as a figurative mark was a useful, but not determinative, starting point. The pictorial representation (a coloured logo) was entirely consistent with that categorisation. 
   
• There was no ambiguity or doubt over the Mark’s subject-matter. While the description referred to BABEK being “embossed”, the way the letters were represented came within that word’s literal and dictionary meaning, and validly suggested that the Mark was intended to be a 3D mark represented in 2D. The reasonable reader would understand that the word “embossed” was being used to refer to the visual effect created by the shadowing of the letters, as well as of the studs, frame and silvery highlights.
   
• As for the colours referred to in the written description, the reasonable reader would understand that “gold oval” was an attempt to concisely describe that depicted in the pictorial representation, and that “gold, black” was supplied to meet the requirement of indicating the Mark’s colour in words – here, gold and black were the principal colours visible.

Second condition: Clarity and Precision

Arnold LJ found that the Mark was clear and precise, although he disagreed with HHJ Hacon’s finding that the Mark was what was shown in the pictorial representation “subject to minor variations in hue”. There was nothing in the description to suggest the pictorial representation was merely an example of what was claimed or that it included variations in hue. 

Other grounds

Dismissing Iceland’s arguments on two of the other grounds, Arnold LJ reiterated that:

• The court should take into account a trade mark’s categorisation, pictorial representation and written description, with none of these given precedence over the other.
   
• “State of the register” evidence was generally irrelevant and inadmissible when considering the validity of a trade mark application or registration. Here, HHJ Hacon erroneously had regard to registrations in previous cases, which were not in evidence before him and ended up forming part of his error in applying the “capacity to distinguish” test.

Arnold LJ therefore dismissed Iceland’s appeal on these grounds, and ruled that the other grounds of appeal overlapped, did not arise, or amounted to mere “nit-picking”. Zacaroli and Newey LJJ agreed.

Comment

The Court of Appeal’s judgment, like the IPEC’s decision, appears to turn on somewhat subjective and case-specific elements.

However, it is useful as a reminder of the importance of treating the three conditions in section 1(1) TMA independently and cumulatively, and that a trade mark’s categorisation, pictorial representation and written description should always be assessed in the round, without giving precedence to one over the other.

Other points in the IPEC’s judgment, such as the need to avoid overliteral pedantry when opposing trade marks under section 1(1) TMA, are preserved and remain potentially relevant.