Iceland Foods loses appeal over Babek trademark validity

The Court of Appeal has upheld the validity of Babek International’s gold-and-black figurative trademark, rejecting Iceland Foods’ arguments that its visual representation and written description failed to meet the clarity and precision requirements for registration.

Iceland Foods has lost its appeal against a ruling upholding the validity of a figurative trademark owned by Babek International, following a dispute over the registration’s representation of its gold oval branding and embossed BABEK lettering.

In Babek International Ltd v. Iceland Foods Ltd [2025] EWCA Civ 1341, handed down on October 23, 2025, the Court of Appeal dismissed Iceland’s challenge, concluding that the trademark satisfied the applicable requirements for registration under the Trade Marks Act 1994.

The registration, which took effect on January 16, 2009, covers goods and services in Classes 29 and 42. It comprises a gold oval logo featuring the word BABEK, with gold and black identified as the claimed colors.

When applying for registration, Babek’s predecessor in title, Bulent Hepurker, described the mark as a “Gold Oval with Embossed BABEK writing” and classified it as figurative.

Iceland challenged the registration under sections 1(1) and 3(1)(a) of the Trade Marks Act 1994, arguing that the mark did not satisfy the requirements for a registrable sign and lacked sufficient clarity and precision. It sought a declaration of invalidity under section 47(1).

The challenge was initially rejected by the Intellectual Property Enterprise Court (IPEC), where His Honor Judge Hacon ruled in Babek’s favor in March 2025. Iceland subsequently appealed.

Dispute over trademark representation

The appeal centered on the relationship between the trademark’s pictorial representation and its written description, particularly whether the combination provided sufficient certainty about the precise subject matter of the registration.

Iceland argued that the description was ambiguous because it did not identify the specific shades of gold and black used in the logo. It also questioned whether the description of the BABEK lettering as embossed accurately reflected the visual representation.

The retailer contended that the registration could encompass multiple possible versions of the mark, rather than identifying one sufficiently precise sign.

Lord Justice Arnold, delivering the leading judgment, agreed with Iceland on one aspect of the lower court’s legal reasoning. He found that the IPEC judge had applied an incorrect test when assessing whether the mark was capable of distinguishing the relevant goods and services.

The requirements for a sign to constitute a trademark, to be represented with sufficient clarity and precision, and to possess distinctive character are independent and cumulative. The first two questions must therefore be assessed separately from the question of distinctiveness.

However, the Court proceeded to reconsider the trademark’s validity and ultimately agreed with the lower court’s conclusion.

Lord Justice Arnold explained that the classification of the mark as figurative was a useful starting point, although it was not determinative. The pictorial representation was consistent with that classification, depicting a colored logo rather than a three-dimensional object. The Court also rejected Iceland’s argument that the reference to embossed lettering created ambiguity.

Although the word “embossed” could ordinarily suggest lettering raised or molded in relief, the Court agreed that a reasonable reader would understand it in this context as describing the visual effect created by the shading and shadows around the letters.

The Court further considered that the shadows around the studs, the frame surrounding the oval and the silvery highlights contributed to the overall visual effect.

No requirement for precise color references

Iceland also argued that the absence of specific color identification codes, such as Pantone references, meant the trademark failed to satisfy the necessary requirements for clarity and precision. The Court rejected this argument.

It agreed that the pictorial representation and written description had to be considered together, rather than treating either as taking precedence over the other. Lord Justice Arnold concluded that the reasonable reader would understand the written description as referring to the visual representation, rather than seeking protection for a broad category of different signs.

The Court also considered that the subtle variations in color and shading did not create uncertainty about the identity of the registered mark.

Lord Justice Zacaroli agreed, noting that requiring an applicant to describe every visual detail would be practically unworkable, given the multiplicity of gold hues and the positioning of subtle variations in light and shade.

He added that an applicant providing a written description of a pictorial representation would reasonably be expected to summarize its features rather than comprehensively catalog every detail. Lord Justice Newey also agreed with the conclusions.

Implications for trademark owners

The decision provides useful clarification for brand owners seeking to register and defend figurative trademarks, particularly where color, shading, and other visual effects contribute to a mark’s overall appearance.

It reinforces the importance of ensuring that a trademark’s visual representation and accompanying written description are consistent and sufficiently precise to identify the subject matter of the registration.

However, the ruling should not be interpreted as removing the requirement for clarity and precision or allowing applicants to claim protection for an unlimited range of visual variations.

The Court’s conclusion was based on the particular registration before it and how a reasonable reader would interpret its pictorial representation and written description together.

The Court of Appeal therefore dismissed Iceland Foods’ appeal, leaving Babek International’s trademark registration valid.

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