Babek International Limited v Iceland Foods Limited & Anor

For validity under Trade Marks Act 1994 sections 1(1), 3(1) and 47(1), the clarity and precision of a figurative mark are assessed as at registration from the perspective of the competent authorities and the public. The registration must be considered as a whole, including its categorisation, visual representation and verbal description. A reasonable reader need not approach minor discrepancies with anxious pedantry. A figurative mark may use visual effects suggesting depth without thereby becoming a three-dimensional mark. Precise colour hues are not invariably required for marks which feature colour but are not colour per se marks. Minor variations in hue do not create a multitude of forms where the mark remains clear, precise and capable of being understood as one sign.

Babek owned a UK comparable trade mark derived from an EU trade mark. Iceland admitted selling goods bearing an identical sign but counterclaimed for a declaration of invalidity, alleging that the registration breached sections 1(1) and 3(1) of the Trade Marks Act 1994, with invalidity sought under section 47(1).

The parties agreed that the issue could be determined summarily without evidence. The central questions were whether, at the date of registration, the mark was ambiguous, whether it had a multitude of forms, and whether it satisfied the Sieckmann criteria, particularly clarity and precision.

1. Summary judgment granted on the counterclaim. The mark satisfied section 1(1) of the Trade Marks Act 1994 and had not been registered in breach of section 3. It was therefore validly registered.

2. The assessment under section 47(1) was required to be made as at the date of registration. At that date the EUIPO record identified the mark as figurative. That categorisation was a useful and unambiguous starting point, although categorisation is not an inflexible rule determining the scope of protection in every case.

3. The registration was to be interpreted as a whole. The visual representation, the verbal description and the stated type of mark had to be considered together. A figurative mark was understood as a two-dimensional mark, and visual effects giving the appearance of embossing or depth did not make it a three-dimensional mark.

4. The relevant authorities and public were to be treated as reasonable readers. The verbal description did not need to reproduce every minor feature shown in the visual representation. The description of embossed BABEK writing was consistent with shadows and other visual effects. The differences between an oval and an ellipse, and the use of dark shading approximating black, did not create legally material ambiguity.

5. The absence of Pantone numbers did not invalidate this mark. Precise hues may be important for colour per se marks, but for other marks featuring colour the need for precision depends on whether colour contributes materially to the mark’s capacity to distinguish. Here the impression was of a single gold figurative mark with shading approximating black. Minor variations in hue did not create a multitude of forms.

6. The mark was clear, precise, self-contained, easily accessible, intelligible, durable and objective. The claim for invalidity was dismissed in substance and the registration remained valid.