The Intellectual Property Enterprise Court (IPEC) has handed down a detailed and instructive decision on the criteria for trade mark validity, with a particular focus on clarity and precision. In Babek International Ltd v Iceland Foods Ltd & Anr [2025] EWHC 547 (IPEC), HHJ Hacon granted summary judgment in favour of Babek, rejecting Iceland’s attempt to invalidate Babek’s UK trade mark on the grounds of ambiguity and non-compliance with the Sieckmann criteria.
This judgment provides a comprehensive review of domestic and CJEU case law on the representation of trade marks, especially colour and figurative marks, and will be of interest to anyone involved in trade mark prosecution or litigation.
Background
Babek International Ltd (Babek) brought a claim for trade mark infringement against Iceland Foods Ltd (Iceland). The trade mark in question was a UK registration derived from an earlier EU registration, consisting of a gold oval with the word “BABEK” and described in the register as:
“Gold oval with embossed BABEK writing. Colour Claimed: Gold, black.”
Iceland admitted using an identical sign on goods falling within the trade mark’s specification but denied infringement on the basis of consent or a third-party licence.
More significantly for this judgment, Iceland counterclaimed for a declaration of invalidity, arguing that the trade mark lacked the clarity and precision required by section 1(1) of the Trade Marks Act 1994, and therefore should be declared invalid under section 47(1).
The legal framework for trade mark validity
The court reviewed sections 1(1), 3(1), and 47(1) of the Trade Marks Act 1994, which require a trade mark to:
Be a sign,
Be capable of being represented in the register in a clear and precise manner,
Be capable of distinguishing the goods or services of one undertaking from those of another.
These requirements have been shaped and clarified by a series of landmark decisions from the CJEU and the English courts. Central to the discussion were the so-called Sieckmann criteria, originating from Sieckmann v Deutsches Patent- und Markenamt (C-273/00), which state that a trade mark must be:
“Clear, precise, self-contained, easily accessible, intelligible, durable and objective.”
Detailed case law analysis
The judgment delves into the application of the Sieckmann criteria across a variety of trade mark types:
Colour per se marks: Cases like Libertel, Heidelberger Bauchemie, and Glaxo Wellcome v Sandoz emphasise the need for precise verbal descriptions (e.g. Pantone codes) to ensure clarity, particularly where a colour alone is the mark.
Figurative marks with colour elements: In Nestlé v Cadbury, the Court of Appeal invalidated a purple mark on the basis that its description (“predominant colour”) allowed for too many variations. Similarly, Sainsbury v Fromageries Bel confirmed that even figurative marks with colour may require precise specification of hue if that is critical to distinctiveness.
Three-dimensional and position marks: The judgment reviewed Thom Browne v Adidas and Deichmann v EUIPO, which clarified that the label given (e.g. “figurative” or “position”) is less important than how the mark will be perceived in context.
These authorities underline a recurring theme: a lack of clarity or excessive variation in how a mark is represented or described can lead to invalidity, particularly where the form or hue of colour is integral to distinctiveness.
Iceland’s arguments
Iceland advanced six arguments against the clarity and precision of Babek’s trade mark:
The term “embossed” implied three-dimensionality, inconsistent with a figurative mark.
The shape, font, and colour were not sufficiently specified.
The visual and verbal elements of the registration were inconsistent.
The colour “gold” was vague and undefined by reference to hue.
The claimed colour “black” was not visible in the image.
Additional unclaimed colours appeared in the visual representation.
These arguments sought to show that the mark was ambiguous and existed in multiple possible forms, breaching the Sieckmann criteria.
The court’s reasoning
HHJ Hacon rejected all six grounds, finding that the trade mark met the required standard of clarity and precision:
The registration unambiguously identified the mark as figurative, and the visual representation was consistent with that categorisation. The word “embossed” referred to a visual effect, not physical embossing.
Minor visual effects such as shadowing and texture did not create ambiguity or multiple forms. They were consistent with how embossing is visually conveyed.
The discrepancy between “oval” and “ellipse” was dismissed as pedantic.
While no Pantone codes were used, the court held that the specific hue of gold or black was not central to the trade mark’s ability to indicate origin.
The inclusion of shading in the image was acceptable, and any colour variations were within reasonable bounds.
The judge held that the trade mark, when assessed from the perspective of both the competent authorities and the public at the time of registration, met all the requirements of section 1(1). The Sieckmann criteria were satisfied, and there was no ambiguity or “multitude of forms”.
What does this mean?
This decision confirms that:
Not all trade marks using colour must specify Pantone or equivalent codes – precision of hue is only essential if the colour is central to the mark’s distinctiveness.
The categorisation of a mark (figurative, 3D, etc.) remains relevant, especially where the visual representation and description align.
Minor inconsistencies or visual effects will not automatically invalidate a mark, particularly if they would not confuse a reasonable observer.
Courts will adopt a pragmatic approach and will not impose an unrealistic standard of perfection on trade mark descriptions.
The ruling offers comfort to trade mark owners whose registrations do not include exhaustive verbal descriptions or hue specifications, provided the overall impression of the mark is clear and consistent.
To find out more about the issues raised in this blog contact Rosie Burbidge.