KEY POINTS

This case highlights the need for clarity and precision in trade mark registrations

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It emphasises the importance of consistency between the written description of a trade mark and its visual representation

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It confirms that minor details in the visual representation need not be referred to in the written description

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It provides helpful guidance on the interpretation of trade marks featuring colour, noting that for marks other than colour per se marks, Pantone numbers are not necessary to satisfy the Sieckmann criteria

MARK

On 11th March, the IPEC rejected Iceland’s claim that a figurative trade mark (shown) does not conform with ss1(1) and 3(1) of the Trade Marks Act 1994 (TMA) and should be declared invalid pursuant to s47(1). It upheld the validity of the trade mark at issue and found that it does satisfy the Sieckmann criteria, in that it is clear, precise, self-contained, accessible, intelligible, durable and objective.

Decision in detail

The Claimant, Babek International Ltd (Babek), was the owner of the depicted UK trade mark registration for BABEK, which is registered for food products in class 29 and for services in class 42 relating to computer hardware, software and research. The mark features the description: “Gold oval with embossed BABEK writing. Colour claimed: Gold, black”.

The Defendant, Iceland Foods Ltd (Iceland), sold goods bearing a sign identical to the BABEK trade mark. Babek brought a claim against Iceland for trade mark infringement and Iceland counterclaimed for invalidity, applying for summary judgment. This present case concerns the counterclaim, which was brought at the IPEC and heard by His Honour Judge Hacon.

Iceland argued that the BABEK trade mark did not meet the requirements in ss1(1) and 3(1) TMA and should be declared invalid pursuant to s47(1). In support of these grounds, Iceland claimed that Babek’s trade mark lacked clarity and precision, caused ambiguity and could take on a multitude of forms, in violation of the Sieckmann criteria.

HHJ Hacon was quick to dismiss certain claims by Iceland, such as the assertion that the written description stated the shape to be an oval, when it ought to have been an ellipse. In a swift denial of this claim, HHJ Hacon referred to this characterisation as “fairly high grade pedantry”. Iceland also claimed the mark is not a figurative mark, as described on the register, but a 3D mark, because some of its elements appear embossed and are listed as such in the description. HHJ Hacon dismissed this argument on the basis that the mark would be understood to show a 2D mark with 3D visual effects.

Interestingly, Iceland alleged that the absence of Pantone numbers within the written description caused ambiguity and a possible multitude of forms. HHJ Hacon drew a distinction between colour per se marks and other types of marks, which feature one or more colours. HHJ Hacon noted that, for cases involving colour per se marks, it was necessary to identify the hue of the colour claimed in order to satisfy the Sieckmann criteria. For other types of marks featuring one or more colours, it may not be as important to specify hues. This case seemingly falls squarely within the latter scenario.

In support of that conclusion, HHJ Hacon revisited the case of Fromageries Bel SA v J Sainsbury Plc,¹ noting that the precise hue is unlikely to play a significant role in making the mark capable of distinguishing the goods or services of one undertaking from those of another and that, accordingly, the hues could vary without affecting the mark’s capacity to distinguish.

In summation of the challenges based on the mark’s description, HHJ Hacon rejected Iceland’s suggestion that a written description must always describe what is shown in the visual representation in every particular, with no detail left unsaid. Instead, the description ought only to contain “important features” rather than “minor details”, and that the readers of the description ought not be supposed to be “anxious pedants”.

Based on this rebuttal, HHJ Hacon rejected Iceland’s arguments that the trade mark lacks clarity and precision and should be declared invalid. He ruled in favour of Babek, concluding that the trade mark does meet the requirements of s1(1) of the 1994 Act and was not registered in breach of s3. The counterclaim under s47(1) was therefore rejected in its entirety.

Practical implications

This case provides some helpful guidance as to how trade marks should be described and presented on the register. It sensibly distinguishes between colour per se marks, where the use of Pantone codes may be required to satisfy the Sieckmann requirements, and other types of marks, where they are not. This prevents an overly technical approach to trade mark registrations and avoids long lists of Pantone codes for marks containing multiple colours. The case also highlights the importance of ensuring that written descriptions, when used, align with the visual representation of the trade mark.

While the decision on the counterclaim was fairly emphatic, Iceland has seemingly sought permission to appeal this decision. We will therefore have to wait a little longer before the courts can make a determination on the real meaty issue at hand: whether Iceland has infringed Babek’s registered trade mark!

1 [2019] EWHC 3454 (Ch)

Keeley Williams is a Chartered Trade Mark Attorney and a Senior Associate at Potter Clarkson
keeley.williams@potterclarkson.com

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