In brief
- The recent Court of Appeal decision in Iceland v Babek provides important clarification on the requirements for valid trade mark registration in the UK.
- The case centred on whether Babek's figurative mark (shown below) met fundamental registrability criteria, with Iceland challenging its validity on the grounds of insufficient clarity and precision.
- The mark was held to be valid and the judgment offers valuable guidance for brand owners on how to properly represent trade marks to withstand validity challenges.
Background
The case concerns a counterclaim for invalidity of the BABEK device mark in infringement proceedings brought by Babek against the supermarket Iceland (which continue, following this decision). Iceland sought summary judgment in relation to the validity issue, which was dismissed by HHJ Hacon in the Intellectual Property Enterprise Court in March 2025.
Babek's trade mark, registered in 2009, is in the form of the below device ('Babek' is 'kebab' spelt backwards):
The mark was categorised by the applicant as 'figurative', and the description in the registration of the trade mark was: "Gold oval with embossed BABEK writing. Colour claimed: Gold, black". Including a description is optional – the relationship between the pictorial representation of the mark and the written description was a central issue before the court.
Court of Appeal decision
The Court of Appeal confirmed that Babek's figurative mark was validly registered in accordance with the registrability criteria set out in the Trade Marks Act 1994 (and relevant case law).
In order to be registered, three independent and cumulative requirements must be met:
- The subject matter of the application or registration must be a sign.
- It must be a sign that is capable of being represented graphically.
- It must be a sign that is capable of distinguishing the goods and services of one undertaking from those of other undertakings.
Iceland argued that the mark was invalid on the basis that it failed to meet the first two of these conditions. Iceland's overarching argument was that the representation of the mark on the register lacked sufficient clarity and precision due to inconsistencies between its visual representation, categorisation and written description, as well as imprecise wording and lack of detail throughout (e.g. describing the mark as oval rather than as an ellipse). Iceland argued the mark failed to satisfy the well-established Sieckmann criteria, which require that a sign's representation must be clear, precise, self-contained, easily accessible, intelligible, durable, and objective for it to be registrable.
On appeal, the Court of Appeal found that the IPEC had applied the wrong test in that it had applied a 'capacity to distinguish' test, which was legally erroneous. The court also upheld the ground of appeal that considering evidence of the state of the register, in the form of registrations belonging to Coca-Cola and Tesco, was impermissible.
Given these errors, the Court of Appeal went on to reconsider the issues on registrability afresh although, ultimately, it reached the same conclusion and upheld the validity of the mark.
In conducting a fresh assessment, the court agreed with the IPEC judge that the applicant's categorisation of the mark as a figurative one was "a useful starting point, but it is not determinative". The court rejected Iceland's argument that the written description was inconsistent with the pictorial representation and gave rise to an ambiguity about the subject matter of the registration. The court did pause to consider the word "embossed" in the written description, but agreed with the IPEC that the reasonable reader would understand this to refer to the visual effect created by the shadowing of the letters.
As for the references to the colours in the written description, the reasonable reader would understand the words "gold oval" to be an attempt concisely to describe what was depicted in the pictorial representation. Meanwhile, the references to "gold, black" would be understood by the reasonable reader to be words that were intended to describe the principal colours visible in the representation.
Accordingly, the court found that the mark complied with the first condition for registrability because it was a single sign, i.e. the sign depicted in the pictorial representation. It also complied with the second condition because it was clear and precise.
Practical considerations
The decision provides valuable practical guidance in the form of key 'do's and don'ts' to bear in mind when filing figurative or non-traditional trade marks in the UK:
- Consistency is key – Brands should ensure alignment between a mark's categorisation, description and visual representation. Inconsistencies that may raise ambiguity as to the subject matter of protection could raise validity issues.
- Minor details – Written descriptions need not describe the mark's every detail if the mark's key features are identified and the remaining details are clear from the visual representation. Where there is consistency (enabling the public or relevant authority to precisely identify the mark being protected), there is no need for any "pedantry" over the detail.
- Non-traditional trade marks – Marks such as colours or smells require more detailed descriptions, as visual representations alone may be insufficiently clear. Descriptions must be specific enough to prevent multiple interpretations of the mark (e.g. including Pantone numbers for colour marks). In this case, the absence of Pantone numbers did not lead to the result that the trade mark had multiple forms – it was not necessary for the competent authorities or the public to be informed of the Pantone numbers because those were not important to make the mark satisfy the Sieckmann criteria.