Trade Marks - Babek International Ltd v Iceland Foods Ltd
This was an application by Iceland Foods Ltd ("Iceland") for summary judgment on its counterclaim for the revocation of registered trade mark number 907527963 held by Babek International Ltd. ("Babek") for meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, competes, eggs, milk and milk products edible oils and fats in class 29 and scientific and technological services and research and design relating thereto, industrial analysis and research services design and development of computer hardware and software in class 42. In this action Babek sued Iceland for infringing its trade mark by selling goods with a sign identical to the mark in respect of which the mark had been registered. His Honour Judge Hacon heard the application on 26 Feb 2025 and delivered his judgment in Babek International Ltd v Iceland Foods Ltd [2025] EWHC 547 (IPEC) on 11 March 2025.
Counterclaim
S.47 (1) of the Trade Marks Act 1994 provides:
"The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration)."
Iceland contended that the trademark did not comply with either s.1 (1) or s.3 (1) of the Act.
"The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration)."
Iceland contended that the trademark did not comply with either s.1 (1) or s.3 (1) of the Act.
S.1 (1)
This subsection defines a trade mark as "any sign which is capable—
(a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
(b) of distinguishing goods or services of one undertaking from those of other undertakings."
It adds that a "trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging,"
(a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
(b) of distinguishing goods or services of one undertaking from those of other undertakings."
It adds that a "trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging,"
S.3 (1) (a) precludes signs that do not satisfy the requirements of s.1 (1) from being registered as trade marks.
Sieckmann
One of the requirements of a trade mark is clarity. In C-273/00 Sieckmann v Deutsches Patent- und Markenamt [2003] 3 WLR 424, [2002] EUECJ C-273/, [2003] RPC 38, [2005] 1 CMLR 40, [2004] All ER (EC) 253, [2003] Ch 487, [2002] EUECJ C-273/00 the Court of Justice of the European Union ruled:
Between paras [12] and [51] the judge reviewed the cases that developed thosee requirements of clarity, precision, self-containment, easy accessibility, intelligibility, durability and objectivity.
Iceland's Arguments
Iceland argued that Babek's trade mark was invalid because it lacked clarity at the time of registration for the reasons that Judge Hacon listed between paras [74] and [80] of his judgment:
"[75] First, despite the Trade Mark being described as a figurative mark, the description includes the word ‘embossed’ which suggests that sign to be protected was a 3D sign in the form of an embossed badge, so that the visual representation was just one image of the sign.
[76] Second, the written description indicates that the sign can be in any oval form, the word BABEK can be in any style of writing and in any position within the oval, and the colours stated could be of any hues.
[77] Third, the verbal description, the visual representation and the colours claimed are inconsistent in that:
(i) Whereas only the BABEK writing is described as embossed, other elements of the sign are shown to be embossed;
(ii) The description says that the sign is an oval, but it is shown as an ellipse;
(iii) The description proper does not mention the claimed colour black;
(iv) Although black is claimed, the visual representation does not feature black, only shadow effects.
[78] Fourth, the claim to the colour gold is not specific as to hue and many hues are shown in the visual representation.
[79] Fifth, the claim to the colour black is not specific as to hue. The colour black does not appear in the visual representation.
[80] Sixth, the visual representation includes colours other than gold and black, namely white, yellow, orange, beige and brown."
"[75] First, despite the Trade Mark being described as a figurative mark, the description includes the word ‘embossed’ which suggests that sign to be protected was a 3D sign in the form of an embossed badge, so that the visual representation was just one image of the sign.
[76] Second, the written description indicates that the sign can be in any oval form, the word BABEK can be in any style of writing and in any position within the oval, and the colours stated could be of any hues.
[77] Third, the verbal description, the visual representation and the colours claimed are inconsistent in that:
(i) Whereas only the BABEK writing is described as embossed, other elements of the sign are shown to be embossed;
(ii) The description says that the sign is an oval, but it is shown as an ellipse;
(iii) The description proper does not mention the claimed colour black;
(iv) Although black is claimed, the visual representation does not feature black, only shadow effects.
[78] Fourth, the claim to the colour gold is not specific as to hue and many hues are shown in the visual representation.
[79] Fifth, the claim to the colour black is not specific as to hue. The colour black does not appear in the visual representation.
[80] Sixth, the visual representation includes colours other than gold and black, namely white, yellow, orange, beige and brown."
The judge noted at [81] that all the objections taken by Iceland to Babek’s trade mark relate solely to its clarity and precision. The first, third and sixth seemed to be about ambiguity allegedly generated by inconsistencies between the visual representation and written description. The second, fourth, fifth and sixth appeared to be about both ambiguity and an alleged multitude of forms.
The Principles Discerned from the Case Law
Judge Hacon discerned the following principles from the cases that he considered between paras [12] and [51] in para [82]:
"(1) As of the date of registration was the registration ambiguous?
(2) As of that date did the Trade Mark, correctly interpreted, have a multitude of forms?
(3) Having regard to the foregoing, were all the Sieckmann criteria satisfied (i.e. the statutory requirements of clarity and precision plus the others listed in Sieckmann)?"
"(1) As of the date of registration was the registration ambiguous?
(2) As of that date did the Trade Mark, correctly interpreted, have a multitude of forms?
(3) Having regard to the foregoing, were all the Sieckmann criteria satisfied (i.e. the statutory requirements of clarity and precision plus the others listed in Sieckmann)?"
Ambiguity
Referring to the Court of Appeal's judgment in Glaxo Wellcome UK Ltd v Sandoz Ltd [2017] EWCA Civ 335, Judge Hacon took as his starting point the statement of the type of mark in the registration. In the present case, anyone consulting the registration would learn that the mark was figurative. There was no ambiguity in this instance. Nor, in His Honour's view, was there any inconsistency between that statement and the visual representation. The statement that the mark was figurative meant that it was tw0-dimensional work and not a three-dimentional one. Accordingly, the visual representation could be and would have been understood to show a two-dimentsional mark with three-dimensional visual effects which effects were hardly new in visual art. There was no inconsistency in the words ‘Embossed BABEK writing’ which could and would have been understood to mean that "BABEK" was represented with an embossed appearance, including shadows. There were some discrepancies between the wording and the representation but the judge concluded that a reasonable reader of the registration would have understiid what had been intended.
Multitude of Forms
The judge held that in the absence of ambiguity there could be no alternative forms.
Shape
Iceland complained of the description of the shape of the mark as an oval when in fact it was an ellipse, His honour dismissed that point as "high grade pedantry."
Colours
The description claimed the colour black which was absent in the representation. While that was literally true it was clear that the description referred to shadowing. Although Iceland found 25 pantone hues of gold in the representation. The judge acknowledged the point bur pointed to many other marks in which colours were claimed without any particular pantone in the specification. Two examples were the Cocal Cola and Tesco marks. If Babek's mark was vulnerable to invalidation on this ground many others would be too. Finally, Iceland submitted that some of the colours in the representation were neither gold nor black. While that was true, the overall impression delivered by the visual representation was of a trade mark coloured gold with shading in approximations of black. In His Honour's judgment, "arriving at the conclusion that the verbal representation in the registration of the Trade Mark is inconsistent with the written description would need an assumed degree of pedantry on the part of the competent authorities and the public which, if required in law, would make the trade mark system unworkable."
Conclusion
The judge concluded that the trade mark when registered satisfied the requirements of s.1 (1) of the 1994 Act and was not registered in breach of s.3. It followed that it was validly registered. It is not clear what has happened or will happen after this judgment. Clearly the summary judgment application failed but the judge did not say whether the counterclaim would fail too. Having said that, Judge Hacon's judgment was so comprehensive it is hard to see what could be left to argue at trial.
Comment
This is an important case on the nature of a trade mark which is one of the fundamentals of this branch of the law. Possibky because of the review of the cases between [12] and [51] this case is not easy to read at first blush. Nevetheless, the analysis makes sense and it would be a very useful authority on future cases on s.1 (1) and s.3 (1).
Anyone wishing to discuss this case may call me on +44 (0)20 7404 5252 during normal UK office hours or send me a message through my contact page at any time.
Anyone wishing to discuss this case may call me on +44 (0)20 7404 5252 during normal UK office hours or send me a message through my contact page at any time.
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