Mind the gap between image and words - Court of Appeal clarifies Trade Mark Precision in Babek International v Iceland Foods [2025] EWCA Civ 1341
The Court of Appeal has dismissed an appeal against a judgment upholding the validity of a UK trade mark owned by Babek International Limited. The mark consists of a pictorial representation of a gold oval with “BABEK” presented with an embossed visual effect, stated to be a figurative mark, accompanied by a written description: “Gold Oval with Embossed BABEK writing” and a colour indication: “Gold, black.”
Legal Background
The validity of the mark was challenged by Iceland Foods under sections 1(1) and 3(1) of the Trade Marks Act 1994, arguing the mark lacked clarity and precision. Three cumulative and independent conditions for registrability must be met:
- the subject matter must be a “sign”;
- the sign must be capable of graphical representation that is clear, precise, self-contained, easily accessible, intelligible, durable and objective (Sieckmann criteria);
- the sign must be capable of distinguishing the goods or services of one undertaking from those of others.
It was alleged that the inconsistency between the pictorial representation and description of the mark meant the first two of the above conditions were not satisfied.
The Court’s Decision
The Court of Appeal dismissed Iceland’s appeal, finding that Hacon J applied an incorrect “capacity to distinguish” test, which conflates the third condition stated above with the first two conditions, contrary to Spear v Zynga and related authority. As the wrong test was applied, the Court of Appeal proceeded to reconsider the matter afresh and concluded the registration satisfies both the first and second conditions.
On the first condition, the Court held the mark is a single sign as shown in the pictorial representation, with the written description understood as a concise clarification of that image. The reference to “embossed” would be reasonably understood as a visual shading effect (and not a claim to a three-dimensional sign), and the references to “gold, black” serve to indicate the principal colours visible in the image. Arnold J determined that the categorisation as a figurative mark, the image, and the description are to be read together, with none taking automatic precedence. He found that, in the present case, these elements were consistent with one another.
On the second condition, the Court found the mark is clear and precise. The Court rejected the defendant’s suggestion that the representation allowed “minor variations in hue” and found nothing in the application to suggest the image illustrates a spectrum of permissible variants.
The appeal was therefore dismissed.
Key Takeaways
- Registrability conditions are independent and cumulative – a trade mark must be a sign, must be capable of being represented graphically and must be capable of distinguishing the goods or services of one undertaking from those of others. These are independent conditions, which should not be conflated.
- Equality for categorisation, image, and description - a mark’s categorisation, image, and description all must be considered together to determine the subject matter and scope of the protection.
- Pantone specifications are not always required – where an image defines a sign and the description concisely clarifies this, the absence of Pantone specifications or exhaustive verbal detail will not necessarily defeat registrability, provided there is no inconsistency or ambiguity and the application does not purport to cover indeterminate variants.
- “…as appears in the representation of the mark attached” - including a written description for a figurative mark is optional in the UK. Where a description is included, any inconsistency between the description and the image may expose the registration to an invalidity challenge for lack of clarity and precision. Inclusion of wording such as “as appears in the representation of the mark attached” could help to mitigate this risk.
Article co-authored by Emily Spain, Trainee Solicitor.
