BABEK v Iceland: Court of Appeal dismisses invalidity challenge

[Oliver Fairhurst]

BABEK v Iceland: Court of Appeal dismisses invalidity challenge

 Oliver Fairhurst Monday, November 03, 2025 - Arnold LJ, BABEK v Iceland, Court of Appeal, registrability, trade marks, Zacaroli LJ

In the second of two cases handed down by the England & Wales Court of Appeal on 23 October 2025, both of which concerned issues around the presentation of marks on the register, the Court of Appeal has upheld the High Court's decision not to declare a proprietor's mark invalid. It will give something of a sigh of relief to proprietors that have specified colours on trade marks without also specifying Pantone/Hex codes. The other decision, Thom Browne v adidas, was considered in this post.   

Those reading the BABEK judgment who have also read the Thom Browne judgment might have a sense of déjà vu when doing so.  Indeed, around half of the paragraphs are identical or nearly identical, namely those setting out the legal framework for what may be registered as a trade mark. 

The majority of those paragraphs that are the same relate to (1) the common ground between the parties in both cases that the inclusion of a written description was optional, that the wording used was a matter for the applicant, and that the term "graphical representation" in Directives 89/104/EEC and 2008/95/EC embraces both the pictorial representations and written descriptions; and (2) the legal framework through which trade marks are registered. 

In relation to (2), that included the three conditions under article 2 of the Directive 2008/95/EC and Article 4 of the Council Regulation (EC) No 40/94: namely that a trade mark must be 'a sign', it must be capable of being represented graphically in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner (the Sieckmann criteria), and it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. The Court of Appeal referred to those as the first, second and third conditions (as the High Court had done in Zynga [2013] EWCA Civ 1175), and those terms are therefore used here).

The first instance decision

At first instance (see IPKat here), the judge (HHJ Hacon) had refused the defendant Iceland Foods' application for summary judgment on its attack against the Claimant's trade mark:

The trade mark was described in the application as “Gold oval with embossed BABEK writing. Colour Claimed: Gold, black.” The applicant had apparently not had the benefit of professional assistance when filing the mark. 

Iceland had been selling a product bearing the trade mark, apparently under a licence from a third party. Those infringement proceedings are ongoing. Iceland's attack on the mark was multi-pronged, but in essence it alleged that the mark failed to satisfy the first and second conditions. Its complaint was mainly that the "reasonable reader" of the trade mark would understand from the reference to embossing that the mark was 3D, that the colours ("Gold, black") were insufficiently/incorrectly identified, and that the description of embossing was confusing. HHJ Hacon refused the application, accusing Iceland of "fairly high grade pedantry". 

The appeal

Iceland appealed on six grounds. Before getting to the grounds, Arnold LJ considered the effect of Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8, which Iceland argued meant that the Court of Appeal could reconsider the lower court's decision as there can only be "one right answer to the question of whether the Trade Mark complied with the first and second conditions for registrability". Arnold LJ held that he was "inclined to agree" with that proposition, but felt it was unnecessary to decide. (Future appellants might sense an opening there.)

The first ground was that the High Court had erroneously applied a "capacity to distinguish" test (i.e. that a colour will only need to be specified if the precise hue is needed for the colour of the mark to distinguish between operators), i.e. a test adopted in Fromageries Bel SA v J Sainsbury Plc [2019] EWHC 3454 (Ch). The Court of Appeal agreed that this was an incorrect test, inappropriately blurring the lines between the first and third conditions. As a result the Court considered it needed to reconsider the issue. The second ground of appeal was dependent on this first ground, and therefore fell away. 

The third and fourth grounds were that the court had given precedence to one or more of the categorisation of the mark as a 'figurative mark', the pictorial representation and the written description. Iceland argued that the High Court had treated the categorisation as a "fixed starting point" and given precedence to the pictorial representation over the written description. These grounds were rejected on the basis that the judge had not given any precedence over another. 

The fifth ground was that the judge had erroneously had regard to other registrations on the register, namely Tesco and Coca-Cola's registrations that refer to the colours in broad terms without specifying a Pantone/Hex code. Arnold LJ agreed with this criticism on the basis that those marks were not in evidence in this case (they had been evidenced in Sainsbury's), and that the 'state of the register' is irrelevant and inadmissible. This Kat has some sympathy for the judge here, as he did not appear to make any findings based on those marks, and while he was not following the three conditions formulation adopted in Zynga, he did appear to be considering the Sieckmann criteria correctly (albeit blurring them with the first condition). However, they were mixed up in his "capacity to distinguish" finding, and this further pointed to the need to re-examine the issue. 

The sixth ground regarded some of the judge's comments about the colours in the pictorial representation, which Iceland said were internally inconsistent or not rationally 

supportable. Arnold LJ dismissed this ground as "no more than nit-picking". (Readers will be aware that HHJ Hacon used the root 'pedant' three times.)

Reconsideration

Having agreed that the judge had fallen into error, Arnold LJ considered that it fell on the Court to reconsider the issue. In doing so, he reached the same conclusion that the mark was valid. In particular, he endorsed the view that the categorisation of the mark (e.g. word, figurative, 3D, etc.) is a "useful starting point" but not determinative. 

Crucially, Arnold LJ held that the pictorial representation was not inconsistent with the written description. The use of the word "embossed" would be taken by the "reasonable reader" (a term with which this Kat is more familiar from defamation case law, but nevertheless gets the point across) to mean that it has an embossed effect. The tripwire on which many a trade mark has stepped, namely that the mark was not a single sign that was presented in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner, had not been triggered.

Interestingly, the Court considered that the reasonable reader would understand the words "gold, black" as being supplied in response to rule 3(5) of the Implementing Regulation ("The colours making up the mark shall also be indicated in words and a reference to a recognized colour code may be added."). Whether the reasonable reader should be taken to understand the terms of the Implementing Regulation appears open to question, but the overarching point that the words conveyed the principle colours in the representation seems a sound one. 

Comment

What appears to be hiding behind the reasoning in this case is exactly the point that HHJ Hacon addressed in Sainsbury's, namely that a huge number of trade marks that describe colours in words would be vulnerable to cancellation if there was a 'failure' to specify a Pantone/Hex code. Had the legislators intended there to be such a requirement, they might well have said so (rather than legislating in rule 3(5) for the colours to be indicated in words with the option of adding a reference to a recognised colour code). 

As such, it appears that it is only where the failure to include the particular hue would render the mark in violation of the first, second or third conditions, that the hue needs to be specified. While the Court appears to have overturned the "capacity to distinguish" test used in Sainsbury's and at first instance, the fundamental reasoning from Sainsbury's, which focused on the Sieckmann criteria (the second condition), appears sound.  

The difference between this decision and that in Thom Browne appears to be both the less clear descriptions used (which were much more vulnerable to an argument that they described a 'multiplicity of signs') and the fact that they were position marks. As with shape marks, the underlying law may be the same, but the treatment of the marks by tribunals is different. All trade marks are equal, but some are more equal than others.  

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