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Consultation on Agricultural and Business Property Relief: payment of tax by instalments
8 July 2025
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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.
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).
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 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.
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.