IPEC decision: Babek International Ltd v Iceland Foods Ltd [2025] EWHC 547 (IPEC)

In these registered trade mark infringement proceedings, the Intellectual Property Enterprise Court gave summary judgment in favour of the Claimant in respect of the Defendant’s counterclaim for a declaration that the Claimant’s figurative mark was invalid.

The judgment is significant as it provides guidance on how UK courts interpret the statutory requirements for trade mark validity, particularly the clarity and precision requirement under section 1(1)(a) of the Trade Marks Act 1994 (the “Act”).

In this article, Paulina explores the dispute and decision, and provides some practical takeaways.

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Paulina Kasprzak | Connect on LinkedIn | pkasprzak@hlk-ip.com

Background to dispute

Babek International Ltd, a producer of meat products (the “Claimant”), brought a claim against Iceland Foods Ltd, the well-known supermarket chain (the “Defendant”), for infringement of its UK registered trade mark no 907527963 (the “Mark”), which took the form of the device shown below:

The Mark was registered for various goods and services in classes 29 and 42, including specified foods and drinks. It was registered at the UK Intellectual Property Office with the following description:

“Gold oval with embossed BABEK writing. Colour Claimed: Gold, black.”

The Mark was derived from an EU registered trade mark which, following Brexit, was automatically created as a comparable UK registered trade mark. The word “BABEK” featured within the Mark is “KEBAB” spelt backwards.

The Defendant counterclaimed for a declaration that the Mark was invalid and sought summary judgment on its counterclaim.

In support of its invalidity counterclaim, the Defendant argued that the Mark did not meet the requirements under sections 1(1) and 3(1) of the Act and should be declared invalid pursuant to section 47(1) of the Act.

Issues considered by the judge

The Defendant’s objections to the Mark all concerned its clarity and precision. These were summarised as follows:

1. Although the Mark was described on the EU register as a figurative mark, the use of the word “embossed” in the written description suggested that the 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.
2. The written description allowed for ambiguity as to the exact shape of the Mark (it suggested that the sign could be in any oval form), the style and position of the word “BABEK”, and the hues of the stated colours.
3. There were inconsistencies between the verbal description, visual representation and the colours claimed:
   1. Only the “BABEK” wording was described as embossed, yet other elements of the sign also appeared to have that effect;
   2. The description stated that the sign was an oval, but it was represented as an ellipse;
   3. The description proper did not mention the claimed colour black;
   4. While black was claimed, the visual representation did not feature black, only shadow effects.
4. The claim to the colour gold was not specific as to hue, with multiple hues appearing in the visual representation.
5. The claim to the colour black was likewise not specific as to hue and the colour black did not appear in the visual representation.
6. The visual representation included other colours – white, yellow, orange, beige and brown – not accounted for in the claimed colours.

Accordingly, the first, third and sixth objections related to the alleged ambiguity resulting from the inconsistency between the visual representation and the written description of the Mark. The second, fourth, fifth and sixth objections concerned both ambiguity and the possibility of the Mark having multiple forms.

To determine this dispute, the judge considered the following issues:

1. As of the date of registration was the registration of the Mark ambiguous?
2. As of that date did the Mark, correctly interpreted, have a multitude of forms?
3. Having regard to the foregoing, were all the Sieckmann criteria satisfied (i.e. was the Mark’s representation clear, precise, self-contained, easily accessible, intelligible, durable and objective)?

Decision

The judge confirmed that the requirements in section 1(1)(a) of the Act (i.e. that the subject matter of a trade mark must be clear and precise) must be satisfied from the point of view of the competent authorities and the public (together the “Reader”). He also clarified that while a trade mark may be registered without a written description, any description provided should be interpreted by reference both to the visual representation and any statement as to the type of mark for which protection is sought.

In addressing the first objection, HHJ Hacon held that the statement of the type of mark in the Mark’s EU registration (i.e. that it was a figurative mark) was a sound starting point and not ambiguous. He found no inconsistency between this statement and the visual representation of the Mark. The Reader was told that the Mark was a figurative 2D mark, not a 3D mark, and the visual representation would simply have been understood to illustrate a 2D mark with 3D visual effects.

He also held that there were no inconsistencies between the written description and the visual representation, and that the “embossed BABEK writing” would have been understood to mean that the “BABEK” text appeared embossed, including the presence of shadows. While other elements such as the studs, boarder and background were also shown in the visual representation with shadows, to create 3D effects, which was not explicitly stated in the written description, these would have been understood as secondary, with embossing being of primary significance to the “BABEK” writing. HHJ Hacon also found that the fact the written description did not specify the precise placing of the various elements of the Mark did not matter, because it was supplemented by the visual representation, which showed not only the positioning but also colour and font.

The judge emphasised that requiring a written description of a trade mark to mirror every single detail shown in the visual representation of the mark would treat the Reader as an “anxious pedant”. A reasonable Reader would expect the important features of a trade mark to be referred to in the written description, with some further and insignificant details appearing in the visual representation. The Defendant’s argument that the Mark’s visual representation depicted an ellipse rather than an oval was also dismissed as “fairly high grade pedantry”.

The Defendant’s objections – that the oval was described as gold while the colours claimed were both gold and black, and that no true black appeared in the visual representation – were also rejected. The judge held that “black” was accounted for in the written description – it was implicit in the “embossed” wording, as shadowing was necessary to create this effect. A reasonable Reader would understand “black” to refer to the dark shadows, which the judge described as “approximately black”.

As for the claim that the hues of gold and black were insufficiently specific, and that additional colours which were not strictly gold or black were present in the image, the judge found that while specifying Pantone hues may be important in colour per se marks, this was unnecessary for figurative marks incorporating colour. Here, the Reader did not require Pantone numbers. They are not required to satisfy the Sieckmann criteria, and the gradient shading in the visual representation did not suggest a multitude of forms. The absence of hue specificity did not render the Mark ambiguous. The judge held that although other colours appeared in the visual representation, the impression conveyed by it was of a trade mark coloured gold with shading.

He concluded that the Mark satisfied the Sieckmann criteria: it was clear, precise, self-contained, easily accessible, intelligible, durable and objective. Treating the visual representation as inconsistent with the written description would require an assumed degree of pedantry on the part of the Reader, which would “render the trade mark system unworkable”. Accordingly, the judge found that the Mark when registered had satisfied the requirements of section 1(1) of the Act and was validly registered.

Practical takeaways

• The case provides a useful overview of the statutory requirements for a valid trade mark, including the Sieckmann criteria, and how they apply across different trade mark types, such as colour per se marks, figurative and 3D marks featuring colour or positional elements.
• The judgment clarifies that UK courts assess compliance with section 1(1) of the Act from the perspective of the competent authorities and the public, who are not “anxious pedants“. Minor inconsistencies between a trade mark’s visual representation and any accompanying written description (which is optional but, if provided, must be considered alongside the visual representation) will not invalidate a registration, unless they create genuine ambiguity about the subject matter of protection.
• While a written description is not mandatory, it can assist in clarifying the scope of protection. That said, it need not replicate every single detail shown in the visual representation. Descriptions are expected to highlight essential features of figurative marks, not the most exhaustive detail – although greater specificity within the description (namely, Pantone references) are required for colour per se marks.

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This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact hlk@hlk-ip.com or your usual HLK advisor.