Babek retain its figurative mark despite Iceland alleging it lacked clarity and precision

In Babek International Ltd v Iceland Foods Ltd ([2025] EWHC 547 (IPEC)), the Intellectual Property Enterprise Court (IPEC) upheld the validity of a figurative trade mark, and helpfully clarified how to interpret trade mark descriptions and when colour hue precision is not required.

Background

Babek International Ltd owns UK Trade Mark No 907527963 for , protecting edible products in Class 29 and various Class 42 services. The mark was registered with the following written description: “Gold oval with embossed BABEK writing. Colour Claimed: Gold, black”.

Iceland Foods Ltd sold identical goods bearing a sign identical to the BABEK mark, and Babek claimed that such use infringed its BABEK mark. Iceland counterclaimed, seeking a declaration of invalidity of the BABEK mark. Further, Iceland alleged that it either had the consent of the BABEK mark’s former owner or that it had a licence from an authorised third party.

The IPEC considered Iceland’s application for summary judgment on its declaration of invalidity counterclaim under Section 47(1) of the Trade Marks Act 1994 that the BABEK mark lacked the necessary clarity and precision to be registrable (contrary to Sections1(1) and 3(1) of the Act).

Iceland raised six arguments about the BABEK mark’s ambiguity and an alleged multitude of forms. The arguments mainly attacked the description, including the word ‘embossed’, which purportedly suggested the mark was a 3D embossed badge, and various alleged inconsistencies between the verbal description, the visual representation and the colours claimed (e.g., the colour gold not being specific as to hue and black not appearing in the visual representation).

Judgment

The court set out the relevant applicable legislation and case law, including the Sieckmann (Case C-273/00) and Libertel (Case C-104/01) criteria and the difference between colour per se marks, figurative/3D marks featuring colour and position marks. As the BABEK mark is a UK comparable mark that arose following Brexit, the court also commented on its effect on the perception of clarity and precision, reiterating that the assessment was at the date of registration (so the mark was a figurative mark, as stated on the EU register).

After critiquing Iceland’s arguments and finding they contained “fairly high-grade pedantry”, the court held that Iceland was unsuccessful. The BABEK mark was deemed “clear, precise, self-contained, easily accessible, intelligible, durable and objective”, satisfying the Sieckmann criteria.

The decision may be summarised as follows:

• The court did not consider that the BABEK mark being labelled as figurative and its visual representation were inconsistent – it would have been understood as a 2D mark with 3D visual effects. The “embossed BABEK writing” description indicated that ‘BABEK’ is represented with an embossed appearance and that a reasonable reader would understand that, while the written description will note important features, further and minor details appearing in the visual representation may not be. Therefore, it did not matter that features such as the studs, border and textured background were not described.
• The court reiterated the importance of interpreting a written description by reference to its visual representation and any statement as to its type of mark. Ultimately, since the BABEK mark was not ambiguous, there were no alternative forms.
• Turning to the colour claims, while arguable that there is no “true black” in the BABEK mark and that the visual representation contained colours not strictly gold or black, it was consistent to describe the dark shadows as black and the mark as containing gold. Additionally, since colours are shown in the visual representation of the BABEK mark, the lack of defined hue was not problematic, especially since the mark’s shading would unhelpfully require a long list of pantone numbers.

The court concluded that finding the verbal representation to be inconsistent with the written description would “need an assumed degree of pedantry”, making the trade mark system unworkable. As the claim of invalidity failed, the BABEK mark remains validly registered and the wider claim will proceed accordingly.

Comment

Against the backdrop of the latest judgments on colour marks, this judgment serves as a reminder of the clarity and precision requirements and that it is not always necessary to note colour hues and describe every element within a mark. A ‘less is more’ approach may suffice.

This article first appeared in WTR Daily, part of World Trademark Review, in March 2025. For further information, please click here.