Babek International Limited v Iceland Foods Limited

This is an appeal by the Defendant (“Iceland”) against an order made by His Honour Judge Hacon sitting in the Intellectual Property Enterprise Court on 11 April 2025 in so far as it dismissed Iceland’s application for summary judgment in its counterclaim for a declaration that United Kingdom Registered Trade Mark No.00907527963 (“the Trade Mark”) owned by the Claimant (“Babek”) was invalidly registered. Iceland contends that the Trade Mark is not registrable. The judge rejected that contention for the reasons given in his judgment dated 11 March 2025 [2025] EWHC 547 (IPEC). Although in form the application before the judge was one for summary judgment, the parties agreed that the judge should determine the validity of the Trade Mark. I granted Iceland permission to appeal.

The Trade Mark was registered with effect from 16 January 2009 in respect of goods and services in Classes 29 and 42. It comprises the pictorial representation shown below.

When Babek’s predecessor in title, Bulent Hepurker (apparently acting in person), filed the application to register the Trade Mark, he completed the form as follows:

“Type of mark figurative

Representation of the mark attached

Colour claimed

Indication of colour(s) Gold and Black

Description of the mark Gold Oval with Embossed BABEK writing”.

The Trade Mark is a so-called “comparable” UK trade mark which replaced an EU (originally Community) trade mark as a result of Brexit. The entry for the Trade Mark on the UK Register makes no mention of the Trade Mark being a figurative mark. The other information supplied by Mr Hepurker is included with the modification that the words “Colour claimed: Gold, black” appear as part of the description of the mark rather than separately.

It can be seen that the Trade Mark comprises both a pictorial representation and a written description. As is common ground, under the applicable legislation, the inclusion of such a written description was optional. Furthermore, if the applicant for registration of a trade mark chose to exercise that option, the wording of the written description was entirely a matter for the applicant. The relationship between the pictorial representation and the written description in the Trade Mark is central to the issues on this appeal.

It may be helpful to explain at this juncture that it is common ground that the expression “graphical representation” used in the legislation discussed below embraces both pictorial representations and written descriptions.

It is common ground that, since the Trade Mark was registered in 2009, its registrability is governed by the legislation that was in force at that time. It is debatable whether that means the relevant provisions of the Trade Marks Act 1994 as they then stood implementing European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) (“the Directive”) or the relevant provisions of Council Regulation 40/94/EC of 20 December 1993 on the Community trade mark (“the Regulation”), but it is common ground that it is not necessary to resolve that question because there is no material difference between the relevant provisions.

Article 2 of the Directive provided:

“Signs of which a trade mark may consist

A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

Article 2 was implemented in the UK by section 1(1) of the 1994 Act as it then stood (it has subsequently been amended to give effect to Directive 2015/2436/EU which replaced Directive 2008/95/EC which replaced Directive 89/104/EEC). Article 4 of the Regulation corresponded to Article 2 of the Directive.

Article 3(1) of the Directive provided:

“The following shall not be registered or if registered shall be liable to be declared invalid:

(a)

signs which cannot constitute a trade mark;

…”

Article 3(1) was implemented by sections 3(1)(a) and 47(1) of the 1994 Act, which remain unamended. Article 7(1)(a) of the Regulation corresponded to Article 3(1)(a) of the Directive.

Rule 3 of Commission Regulation 2868/95/EC implementing Council Regulation 40/94/EC on the Community trade mark as amended by Commission Regulation 1041/2005/EC of 29 June 2005 (“the Implementing Regulation”) provided, so far as relevant:

“Representation of the mark

(1)

If the applicant does not wish to claim any special graphic feature or colour, the mark shall be reproduced in normal script, as for example, by typing the letters, numerals and signs in the application. The use of small letters and capital letters shall be permitted and shall be followed accordingly in publications of the mark and in the registration by the Office.

(2)

In cases other than those referred to in paragraph 1 and save where the application is filed by electronic means, the mark shall be reproduced on a sheet of paper separate from the sheet on which the text of the application appears. The sheet on which the mark is reproduced shall not exceed DIN A4 size (29,7 cm high, 21 cm wide) and the space used for the reproduction (type-area) shall not be larger than 26,2 cm × 17 cm. A margin of at least 2,5 cm shall be left on the left-hand side. Where it is not obvious, the correct position of the mark shall be indicated by adding the word ‘top’ to each reproduction. The reproduction of the mark shall be of such quality as to enable it to be reduced or enlarged to a size not more than 8 cm wide by 16 cm high for publication in the Community Trade Mark Bulletin.

(3)

In cases to which paragraph 2 applies, the application shall contain an indication to that effect. The application may contain a description of the mark.

…

(5)

Where registration in colour is applied for, the representation of the mark under paragraph 2 shall consist of the colour reproduction of the mark. The colours making up the mark shall also be indicated in words and a reference to a recognized colour code may be added.

…”

The case law of the Court of Justice of the European Union decided prior to 31 December 2020, which is assimilated law, establishes that, in order to comply with Article 2 of the Directive and Article 4 of the Regulation, the subject matter of an application or registration must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. See in particular Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I at [23], Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-6129 at [22] and Case C-321/03 Dyson v Registrar of Trade Marks [2007] ECR I-687 at [28]. It is clear that these conditions are independent and cumulative.

In Case C-273/00 Sieckmann [2002] ECR I-11754 the CJEU held at [44]-[45] that the list of examples of signs in Article 2 is not exhaustive, and therefore a trade mark may consist of a sign which is not itself capable of being perceived visually, provided that it can be represented graphically. Accordingly, an odour can be a sign. The same applies to sounds: see Case C-283/01 Shield Mark BV v Josst Kist h.o.d.n. Memex [2003] ECR I-14329 at [35]-[37].

The CJEU has also held that both (i) a single colour which is not spatially defined and (ii) a combination of colours which is not spatially delimited are capable of being a sign: see Libertel and Heidelberger Bauchemie.

In relation to a single colour, the CJEU said in Libertel at [27]:

“… a colour per se cannot be presumed to constitute a sign. Normally a colour is a simple property of things. Yet it may constitute a sign. That depends on the context in which the colour is used. Nonetheless, a colour per se is capable, in relation to a product or service, of constituting a sign.”

In Heidelberger Bauchemie the applicant had applied to register a mark which was represented by a rectangular piece of paper, the upper half of which was blue and the lower half of which was yellow, and which was described as follows:

“The trade mark applied for consists of the applicant’s corporate colours which are used in every conceivable form, in particular on packaging and labels.

The specification of the colours is:

RAL 5015/HKS 47 – blue

RAL 1016/HKS 3 – yellow.”

The CJEU dealt with the first condition as follows:

“23.

As the Court has already held, colours are normally a simple property of things (Libertel, paragraph 27). Even in the particular field of trade, colours and combinations of colours are generally used for their attractive or decorative powers, and do not convey any meaning. However, it is possible that colours or combinations of colours may be capable, when used in relation to a product or a service, of being a sign.

24.

For the purposes of the application of Article 2 of the Directive, it is necessary to establish that in the context in which they are used colours or combinations of colours which it is sought to register in fact represent a sign. The purpose of that requirement is in particular to prevent the abuse of trademark law in order to obtain an unfair competitive advantage.”

It appears from the judgment, in particular [33]-[35] quoted in paragraph 30 below, that the CJEU regarded the fact that the mark consisted of colours “which are used in every conceivable form” as a factor that was primarily relevant to the second condition rather than the first condition. Nevertheless, the Court’s ruling was that:

“Colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours, and in shades which are named in words by reference to a colour sample and specified according to an internationally recognised colour classification system may constitute a trade mark for the purposes of Article 2 of [the Directive] where:

– it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign, and

– the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way.

…”

In Dyson Dyson had applied to register the following mark:

The CJEU noted in its judgment that:

“19.

As Dyson has stated on a number of occasions both in its written observations and at the hearing, and as the national court itself noted in its order for reference, the application does not seek to obtain registration of a trade mark in one or more particular shapes of transparent collecting bin – the shapes represented graphically on the application form being only examples of such a bin – but rather to obtain registration of a trade mark in the bin itself. It is, moreover, common ground that those marks consist not of a particular colour, but rather in the absence of any particular colour, namely transparency, which enables the consumer to see how much dust has been collected in the collecting bin and to know when the bin is full.

20.

It follows that the trade mark application in the main proceedings covers all the conceivable shapes of a transparent collecting bin forming part of the external surface of a vacuum cleaner.”

The Court held that this did not satisfy the first condition for the following reasons:

“35.

In the present case, it is common ground that the subject-matter of the application in the main proceedings is not a particular type of transparent collecting bin forming part of the external surface of a vacuum cleaner, but rather, in a general and abstract manner, all the conceivable shapes of such a collecting bin.

36.

In that regard, Dyson cannot maintain that the subject-matter of its application in the main proceedings is capable of being perceived visually. What consumers can identify visually is not so much the subject-matter of the application as two of Dyson’s graphic representations as contained in the application. Those representations cannot be assimilated to the subject-matter of the application because, as pointed out by Dyson on a number of occasions, they are merely examples of it.

37.

It follows that, unlike the applications which gave rise to the judgments in Sieckmann and Shield Mark, the subject-matter of the application in the main proceedings is capable of taking on a multitude of different appearances and is thus not specific. … the shape, the dimensions, the presentation and composition of that subject-matter depend both on the vacuum cleaner models developed by Dyson and on technological innovations. Likewise, transparency allows for the use of various colours.

38.

Given the exclusivity inherent in trade mark right, the holder of a trade mark relating to such a non-specific subject-matter would obtain an unfair competitive advantage, contrary to the purpose pursued by Article 2 of the Directive, since it would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface, irrespective of its shape.

39.

It follows that the subject-matter of the application at issue in the main proceedings is, in actual fact, a mere property of the product concerned and does not therefore constitute a ‘sign’ within the meaning of Article 2 of the Directive (see, to that effect, Libertel, paragraph 27).”

Dyson was an extreme case on the facts, but the underlying principle is not confined to such extreme facts. This is demonstrated by two decisions of this Court concerning the first condition in appeals that were heard together by the same constitution, which gave judgment in both appeals on the same day.

In J. W Spear & Son Ltd v Zynga Inc [2013] EWCA Civ 1175, [2014] FSR 14 Mattel was the proprietor of a trade mark described as follows: “The mark consists of a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10”. The registration included a line drawing depicting a tile. Zynga challenged the validity of the registration. At first instance [2012] EWHC 3345 (Ch), [2013] FSR 28 I held as follows:

“The first condition

47.

In my judgment the Tile Mark does not comply with the first condition for the following reasons. As Zynga rightly contends, the Tile Mark covers an infinite number of permutations of different sizes, positions and combinations of letter and number on a tile. Furthermore, it does not specify the size of the tile. Nor is the colour precisely specified. In short, it covers a multitude of different appearances of tile. It thus amounts to an attempt to claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bear any letter and number combination on the top surface. In my view that is a mere property of the goods and not a sign. To uphold the registration would allow Mattel to obtain an unfair competitive advantage.

The second condition

48.

Even if the Tile Mark complies with the first condition, in my judgment it does not comply with the second condition since the representation is not clear, precise, intelligible or objective. As discussed above, the representation covers a multitude of different combinations. It does not permit the average consumer to perceive any specific sign. Nor does it enable either the competent authorities or competitors to determine the scope of protection afforded to the proprietor, other than that it is very broad.”

This Court endorsed those conclusions and the reasons given for them. 

In Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174, [2014] RPC 7Cadbury had applied to register a mark described as follows: “The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”. The description was accompanied by a colour swatch. The application was opposed byNestlé, which prevailed in this Court for the reasons summarised by Sir John Mummery at [55]:

“In brief, the description of the mark as including not just the colour purple as a sign, but other signs, in which the colour purple predominates over other colours and other matter, means that the mark described is not ‘a sign.’ There is wrapped up in the verbal description of the mark an unknown number of signs. That does not satisfy the requirement of ‘a sign’ within the meaning of Article 2, as interpreted in the rulings of the CJEU, nor does it satisfy the requirement of the graphic representation of ‘a sign’, because the unknown number of signs means that the representation is not of ‘a sign.’ The mark applied for thus lacks the required clarity, precision, self-containment, durability and objectivity to qualify for registration.”

It is clear from these authorities that a written description which embraces a multiplicity of signs does not comply with the first condition. Counsel for Babek submitted that (subject to compliance with the second condition) this does not prevent registration of a single sign whose appearance can vary within permissible limits. That submission entails distinguishing between a description which embraces a multiplicity of signs on the one hand and a description of a single sign whose appearance can vary within permissible limits on the other hand. Counsel for Babek did not articulate any bright-line test for making that distinction, but submitted that it was a question of fact and degree. Counsel for Iceland disputed that any variation was permissible. In the alternative he submitted that, if any variation was permissible, the test for what was permissible was whether the differences between variants would go unnoticed by the consumer (i.e. the test for identity of marks and of marks and signs established by the CJEU in Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799). For reasons that will appear, it is not necessary to determine who is correct about this.

In Sieckmann the CJEU explained what was required by the second condition as follows:

“46.

That graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified.

47.

Such an interpretation is required to allow for the sound operation of the trade mark registration system.

48.

First, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor.

49.

Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators.

50.

On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of registration applications and to the publication and maintenance of an appropriate and precise register of trade marks.

51.

On the other hand, economic operators must, with clarity and precision, be able to find out about registrations or applications for registration made by their current or potential competitors and thus to receive relevant information about the rights of third parties.

52.

If the users of that register are to be able to determine the precise nature of a mark on the basis of its registration, its graphic representation in the register must be self-contained, easily accessible and intelligible.

53.

Furthermore, in order to fulfil its role as a registered trade mark a sign must always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin. In the light of the duration of a mark’s registration and the fact that, as the Directive provides, it can be renewed for varying periods, the representation must be durable.

54.

Finally, the object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective.

55.

In the light of the foregoing observations, the answer to the first question must be that Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”

The Court went on to hold at [69]-[73] that none of the methods of graphical representation of an olfactory sign proposed in that case – a chemical formula, a description in words, the deposit of a sample and a combination of those methods – satisfied these requirements.

In Libertel the CJEU held at [30]-[38] that, in the case of a colour per se, the requirements that the representation be clear, precise, self-contained, easily accessible, intelligible, durable and objective could not be satisfied merely by providing a sample of the colour on a flat surface, but might be satisfied either by including a description of the colour in words or, more readily, by designating the colour using an internationally recognised identification code.

In Shield Mark the CJEU held at [57]-[63] that these requirements were not satisfied by written descriptions such as “the first nine notes of ‘Für Elise’” or “a cockcrow”, nor by an onomatopoeia, but were satisfied by a full musical score written in conventional notation.

In Heidelberger Bauchemie the CJEU held that the mark applied for did not satisfy these requirements for the following reasons:

“33.

Accordingly, a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way.

34.

The mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, as is the case with the trade mark which is the subject of the main proceedings, does not exhibit the qualities of precision and uniformity required by Article 2 of the Directive, as construed in paragraphs 25 to 32 of this judgment.

35.

Such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark.”

In Case C-578/17 Oy Hartwall ab [EU:C:019:261] Hartwall had applied to register the device shown below accompanied by the description “The colours of the sign are blue (PMS 2748, PMS CYAN) and grey (PMS 877)” as a colour mark, not a figurative mark.

The CJEU held as follows:

“36.

By its second question, the referring court asks, in essence, whether Article 2 of Directive 2008/95 must be interpreted as precluding the registration of a mark, such as that at issue in the main proceedings, submitted, in the application for registration, in the form of a drawing of a colour mark.

37.

In the present case, the referring court states that, according to the application for registration submitted by Hartwall, the sign protection of which is sought is represented by a colour drawing with defined contours, whereas the classification given by Hartwall to the mark registration of which is sought is that of a colour combination without contours.

38.

In that regard, it should be noted that, according to the Court’s settled case-law, a sign may be registered as a mark only if the applicant provides a graphic representation in accordance with the requirement in Article 2 …, to the effect that the subject matter and scope of the protection sought are clearly and precisely determined (see, to that effect, … Libertel, … paragraph 29 and the case-law cited).

39.

The verbal description of the sign serves to clarify the subject matter and scope of the protection sought under trade mark law (see, to that effect, … Shield Mark, … paragraph 59, and, as an example, … Heidelberger Bauchemie, … paragraph 34).

40.

… when the trade mark application contains an inconsistency between the sign, protection in respect of which is sought in the form of a drawing, and the classification given to the mark by the applicant, the consequence of which is that it is impossible to determine exactly the subject matter and scope of the protection sought under trade mark law, the competent authority must refuse registration of the mark on account of the lack of clarity and precision of the trade mark application.

41.

In the present case, the sign protection in respect of which is sought is represented by a figurative drawing, whereas the verbal description relates to a protection concerning two colours alone, that is, blue and grey. Moreover, Hartwall has clarified that it seeks to register the mark at issue as a colour mark.

42.

Those circumstances appear to reveal an inconsistency showing that the application for protection under trade mark law is unclear and imprecise.

43.

Consequently, the answer to the second question is that Article 2 … must be interpreted as precluding, in circumstances such as those in the main proceedings, the registration of a sign as a mark due to an inconsistency in the application for registration, which it is for the referring court to ascertain.”

In Case C-124/18 P Red Bull GmbH v European Union Intellectual Property Office [EU:C:2019:641] the CJEU upheld a decision of the General Court that two registrations by Red Bull of two colours per se, namely blue and silver, did not comply with the second condition. The registrations comprised (i) a pictorial representation consisting of two equally-sized rectangles, one blue and one silver, placed adjacent to each other along a long edge and (ii) a written description which specified the precise shades of blue and silver and stated (in the first case) that “[t]he ratio of the colours is approximately 50%-50%” or (in the second case) “[t]he two colours will be applied in equal proportion and juxtaposed to each other”.

The CJEU held at [37]:

“Where the application is accompanied by a verbal description of the sign, that description must serve to clarify the subject matter and scope of the protection sought under trade mark law and such a description cannot be inconsistent with the graphic representation of a trade mark or give rise to doubts as to the subject matter and scope of that graphic representation (see, to that effect, … Hartwall at paragraphs 39 and 40).”

It is clear from the context that the references in this paragraph to the “graphic representation” are to the pictorial representation.

The CJEU went on to hold at [47]:

“… the General Court did not err in law in concluding, in the judgment under appeal, that the registration of a mark which allows for a plurality of reproductions that are neither determined in advance nor uniform is incompatible with Article 4 of Regulation No 207/2009 and … Heidelberger Bauchemie ….”

There have been three decisions of this Court concerning this condition. The first two are Spear v Zynga and Nestlé v Cadbury, which I have already discussed. In Glaxo Wellcome UK Ltd v Sandoz Ltd [2017] EWCA Civ 335, [2017] FSR 33 Glaxo was the proprietor of a trade mark described as follows: “The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler.” The registration also included INID code 558 (an international code meaning that the trade mark consists exclusively of two or more colours) and the image shown below.

Sandoz challenged the validity of the registration. HHJ Hacon held that it did not comply with the second condition because anyone looking at the register and trying to understand precisely what the mark consisted of was presented with a puzzle to which there were three possible solutions. The first was a mark with the outline and arrangement of dark and light purple colours shown in the visual representation. The second was a mark consisting of the dark purple colour applied to a significant portion of an inhaler, and the light purple colour applied to the remainder, that is to say in any arrangement of colours meeting the written description. The third was a mark having a pattern of dark and light purple colouring taking the form of any one of a number of abstractions said by Glaxo in proceedings in other jurisdictions and before EUIPO to constitute the mark. This Court upheld that conclusion.

Kitchin LJ gave a clear explanation of the rationale for the second condition, which also applies to the first condition, at [36]:

“The reasons for these requirements are plain to see. A mark must always be perceived unambiguously if it is to fulfil its function as an indication of origin. Moreover, the authorities must refuse to register the sign if, upon opposition by the proprietor of an earlier trade mark, the sign is found to be identical to the earlier mark and if the products or services for which registration is sought are identical with those for which the earlier mark is protected. So also, upon opposition by the proprietor of an earlier trade mark, the authorities must refuse to register the sign where, by virtue of its identity or similarly with an earlier mark and the identity or similarity of the relevant goods or services, there exists a likelihood of confusion. Similarly, the owner of a registered trade mark is entitled to prevent a third party from using a sign which is identical to his mark for goods or services which are identical to those for which the mark is protected. He can also prohibit the use of a sign where, by virtue of its identity or similarity with the mark and the identity or similarity of the relevant goods or services, there exists a likelihood of confusion. As Advocate General Philippe Leger explained in his opinion in Heidelberger at [56], assessment of notions of ‘identity’ and ‘risk of confusion’ necessarily implies a precise knowledge of the sign and mark in question, as they are or as they may be seen by the public concerned.”

As counsel for Iceland submitted, and I agree, the point made by Kitchin LJ towards the end of this paragraph bears emphasis. The legislation requires a comparison to be made between an earlier trade mark and a later trade mark, or between a trade mark and an allegedly infringing sign, in order to determine whether or not they are identical. It would not be consistent with the scheme of the legislation for the earlier trade mark to comprise multiple candidates for comparison capable of giving rise to different answers to the question “identical or not?”.

It should be appreciated, however, that the comparison must be undertaken at the correct level of abstraction. If the trade mark is a word mark, then the trade mark consists of the word as a word. Any sign consisting of the same word will be identical to the trade mark regardless of font, size or colour. Similarly, if the trade mark is a device registered in monochrome (i.e. without any colour claim or limitation), then the trade mark consists of the device as a device. Any sign consisting of the same device will be identical to the trade mark regardless of size or colour. Another way of looking at this is to regard such questions as concerning the scope of protection of the trade mark, rather than the sign of which it consists.

Returning to Glaxo, Kitchin LJ stated at [69]:

“I … reject [counsel for Glaxo]’s submission that a mark consisting of one or more colours per se is defined by the pictorial representation showing how the colour or colours are to be applied. The verbal description of such a mark is also important and must be taken into account together with the pictorial representation. The graphical representation, comprising both the pictorial representation and the verbal description, must be considered as a whole.”

Kitchin LJ went on to explain at [77]-[79] that none of the three possible interpretations of the Glaxo registration was free from difficulty. He concluded at [80]:

“Stepping back, I believe that the public, including economic operators, looking at the certificate of the Trade Mark on the register, would be left in a position of complete uncertainty as to what the protected sign actually is. In the words of the Board of Appeal in the Seven Towns case, they would be left scratching their heads. [Counsel for Sandoz] submits and I incline to agree, that the third possible interpretation is the best (or at any rate the least bad) of the three for it provides a way of reconciling the INID code, the pictorial representation and the verbal description. However, this is far from clear. In my judgment, the Trade Mark lacks the clarity, intelligibility, precision, specificity and accessibility that the law demands. Moreover, I have no doubt that it would not be perceived unambiguously and uniformly by the public. It also offends against the principle of fairness because the uncertainty as to what the subject matter of the mark actually is gives Glaxo an unfair competitive advantage. These deficiencies in the Trade Mark are compounded by the range of alternatives that the second and the third possible interpretations encompass. Just as in Heidelberger, each of them allows for numerous different combinations of the dark and light purple colours. Consequently, neither of them exhibits the qualities of precision and uniformity required by Article 4 of the EUTMR.”

We were referred to three previous domestic decisions concerning the precision with which colours must be specified in trade marks which are not pure colour marks. None of these decisions is binding on this Court, but they are instructive. The first in time is Robert McBride Ltd’s Trade Mark Application [2003] RPC 19. In that case McBride applied to register the trade mark depicted below.

The application stated that the signs were put forward for registration as three dimensional marks, with a claim to the colours yellow and white as indicated. Geoffrey Hobbs QC sitting as the Appointed Person upheld the Registrar’s decision that the application was not entitled to its original filing date because the colour yellow was insufficiently precisely defined, but only entitled to a filing date corresponding to the date on which McBride cured that deficiency by specifying that the relevant shade of yellow was a specific Pantone reference. Although this decision pre-dated Sieckmann, the reasoning anticipated it and was repeated by Mr Hobbs in the next decision.

The second decision is Calor Gas (Northern Ireland) Ltd’s Trade Mark Application (O/340/06). In the case Calor applied to register a series of two trade marks both as depicted below.

One mark in the series was described as follows: “The Trade Mark consists of the colour yellow applied to the outer surface of the cylinder within which gas is contained.” The other mark was described as follows: “The Trade Mark consists of the colour yellow applied to the outer surface of a cylinder within which gas is contained.” Mr Hobbs upheld the Registrar’s decision that the mark was not registrable because the colour yellow was insufficiently precisely defined in the application form, and that the deficiency had not been cured by the subsequent filing of an electronic image in JPEG format depicting the shade of yellow in question.

At pages 9-10 Mr Hobbs reasoned as follows:

“The Sieckmann criteria are clearly not satisfied by a graphic representation which lacks precision as to the particular colour or colours in which the identity of a colour specific sign resides. That is especially true when the lack of precision is attributable to the inclusion of general designations such as ‘red’, ‘green’ or ‘blue’ in the graphic representation of the sign. Such designations are, in the absence of further clarification, apt to render the representation unacceptable for ambiguity as noted in Robert McBride Ltd’s Trade Mark Application [2003] RPC 343 at [9]:

‘... The identity of a colour resides in the hue that it presents to the eye of the observer. A verbal description which fails to identify the hue of the colour it seeks to define is a recipe for uncertainty: it would leave room for differing perceptions of different individuals to be equally applicable benchmarks by which to judge whether a particular hue falls within the relevant wording, with each individual also being liable to regard the wording of the description as applicable to a multiplicity of different colour shades, c.f. Orange Personal Communications Ltd’s Application.’

In order to avoid that problem, the graphic representation should contain as much information as people who consult the register would realistically need to know in order to determine how closely a given colour or colour scheme matches the one which the graphic representation is intended to identify.”

He explained why the provision of the JPEG file did not cure the problem caused by the use of the word “yellow” at pages 31-32:

“… I do not accept that the evidence on file establishes public recognition of the particular colour represented in the JPEG file as yellow. Even if some people are liable under some conditions to classify it as a shade of yellow, I have no doubt that there are plenty of other people who would be liable under the same or similar conditions to classify it as a shade of orange. And there lies the problem. People addressing themselves to the graphic representation of the sign with the assistance of the visual information provided by the JPEG file would, in my view, be left thinking that, if the visual information provided by the JPEG file is intended to demonstrate what the applicant means by use of the word ‘yellow’, it is not clear how far the coverage of the word and the visual information in combination should then be taken to extend.”

The third decision is J. Sainsbury plc v Fromageries Bel SA [2019] EWHC 3454 (Ch), [2020] RPC 3. In that case Bel registered the mark depicted below.

The mark was described as follows: “The mark is limited to the colour red. The mark consists of a three-dimensional shape and is limited to the dimensions shown above.” Sainsbury applied for a declaration of invalidity. The hearing officer acting for the Registrar, Allan James, held that the Libertel requirements applied to every trade mark in which colour was an essential characteristic of the mark. Since he considered that the colour red was an essential characteristic of the contested mark, the contested mark was invalid because it did not specify the shade of red sufficiently precisely.

On appeal to the High Court HHJ Hacon disagreed with Mr James’ reasoning, but nevertheless reached the same conclusion. He applied the following test:

“63.

Turning to marks containing colour which are not colour per se marks, it is of course the entire mark, including non-colour elements, which must be capable of distinguishing. However, the colour element may play a part in ensuring that it is and that in turn may depend on the colour being of a particular hue.

…

67.

… It seems to me that where a mark contains colour but is not a colour per se mark, the need for precision as to hue will depend on the extent to which other elements of the mark serve to make the mark capable of distinguishing. More exactly, it will depend on the extent to which the colour of the relevant feature of the mark contributes to making the mark capable of distinguishing and whether it is likely that only a particular hue will confer on the mark that capacity to distinguish. It will always be a question of fact and degree.”

Applying that test, he concluded at [78] that “the Trade Mark could be capable of distinguishing only if a particular hue of red used on the main body of the product is associated with [Bel]’s cheese”. Since the trade mark was not limited to a single hue of red, it was invalid.

It is not necessary to discuss this in detail for the purposes of the present appeal. It is sufficient to note that a sign is only incapable of distinguishing the goods or services of one undertaking from those of other undertakings for the purposes of Article 2 if it is incapable of distinguishing the former from the latter irrespective of the goods or services in relation to which it may be used: see Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2004] ECR I-1619 at [80]-[81] and Case C-421/13 Apple Inc v Deutsches Patent- und Markenamt [EU:C:2014:2070] at [20]-[21].

Iceland contends that the Trade Mark does not comply with either the first condition or the second condition discussed above, although I think it is fair to say that Iceland places more emphasis on the second condition. It does not appear that the parties clearly distinguished between the two conditions in argument before the judge. Although in many cases factors which lead to non-compliance with one condition will also lead to non-compliance with the other condition, this is not necessarily the case. The two conditions are independent and cumulative conditions, and it is better to consider them separately.

The judge discussed the law at [10]-[74]. It is only necessary to note three points about his discussion. First, at [34] he cited his statements in Sainsbury at [63] and [67].

Secondly, at [39]-[51] he considered the relevance of the categorisation of the Trade Mark in the application as a “figurative mark”. He concluded at [50]:

“Although in Glaxo the Court of Appeal’s analysis took the categorisation of the mark as a colour per se mark to be a firm starting point, I do not believe that the Court of Appeal intended to formulate any rule of law about this.  And the judgment of the CJEU in Hartwell implies that there is no such rule of law.  However, often it will be the most useful starting point.  Its advantage is that the categorisation chosen is an unambiguous statement about the protection sought for the mark, whereas the visual representation and verbal description, individually and/or taken together, may not be - as in Glaxo.”

Thirdly, at [67]-[73] he considered the relevance of the fact that the Trade Mark derived from a Community trade mark. He concluded at [73]:

“… section 47(1) of the 1994 Act provides that the registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of s.3.  The statute requires the assessment to be conducted as of the date of registration.  As of that date the competent authorities and the public were told that the proprietor intended the mark to be a figurative mark.  Clarity and precision must be assessed accordingly.”

The judge set out his interpretation of the Trade Mark in the following passage:

“83.

It seems to me that, as was the case in Glaxo, the statement of the type of mark in the registration is a useful starting point.  The statement was not ambiguous.  The reader was told that it is a figurative mark.  Here for convenience I use ‘reader’ as a compendious term for the competent authorities and the public.

84.

In my view there is nothing inconsistent between this statement and the visual representation.  The reader is told that this is a figurative mark and therefore a 2D mark, not a 3D mark.  Accordingly, the visual representation could be and would have been understood to show a 2D mark with 3D visual effects.  Such effects were hardly new in visual art.

85.

The written description is not inconsistent with this either.  ‘Embossed BABEK writing’ could, and in my view would, have been understood to mean that BABEK is represented with an embossed appearance, including shadows.

86.

It is correct to say that in the visual representation the studs and the border are also shown have shadows to give a 3D effect.  Arguably the same could be said of the textured background.  Had the written description stated that only the BABEK writing is embossed, or alternatively that the studs and border are not embossed, there may have been a difficulty.  As it is, I think the reader would have understood that the embossing effect is of principal significance in relation to the BABEK writing, and so it appears from the visual representation.  Of less significance to the distinctiveness of the mark are the studs, border and textured background.

87.

It was said that this nonetheless leaves the mark ambiguous since the reader would have been uncertain whether the studs, border and textured background should appear embossed or not.  Such an argument suggests that a written description, if present, must always describe what is shown in the visual representation in every particular, with no detail left unsaid.  I reject such an approach.  I see no reason to suppose that the competent authorities and the public of s.1(1)(a) should be taken to consist of anxious pedants.  A reasonable reader would have understood that important features will be referred to in the written description, while further and minor details appearing in the visual representation may not be.

88.

Commission Regulation (EC) 2868/95 as amended permitted the filing of a trade mark application with no written description.  The applicant for the Trade Mark could have done that.  However, it does not alter the position that if a written description is filed it is to be interpreted by reference both to the visual representation and any statement as to the type of mark for which protection is sought.  For the reasons I have given, the reasonable reader would have understood what was intended.

…

91.

Iceland points out that the oval is described as gold but the colours claimed are both gold and black.  However, the description also says that the word BABEK is embossed.  To create the embossed effect there are shadows, which accounts for the reference to black.

92.

Iceland’s next point is that there is no true black shown.  Considered over-literally that is true.  But there is no inconsistency.  A reasonable reader would understand that what is meant by black are the dark shadows, which could not sensibly be described as gold in colour and are approximately black.

93.

Iceland was able to find 25 pantone hues which, it says, might all be described as hues of gold, in metallic and non-metallic varieties.  The same argument was made in respect of black, for which 18 pantone hues were found.  Looking at these as presented at the hearing I am not sure that they could all be described as gold or black, but this is not to the point.”

At [95]-[98] the judge referred to two registrations owned by Coca-Cola and Tesco which he had considered in his judgment in Sainsbury.

The judge set out his conclusion in the following passage:

“100.

In relation to s.1(1)(a), in my view the reasonable reader of the registration of the Trade Mark would have understood that the mark is a figurative mark as shown in the visual representation.  The written description does not tell the reader much more save that the embossed effect used for the BABEK writing is of particular significance.  The lack of much further information need not matter, provided there is no inconsistency.  The colours of the Trade Mark are as shown in the visual representation.  It was not necessary for the competent authorities or the public to be informed of Pantone numbers because precise hues are not important to making the Trade Mark to satisfy the Sieckmann criteria.  Aside from that, the shading of one colour to another in the visual representation would unhelpfully require a long list of pantone numbers.

101.

Looking at this in more detail, the absence of Pantone numbers does not lead to the result that the Trade Mark has multiple forms.  It has one single form, that shown in the visual representation, subject to minor variations in hue which would not lead the reasonable reader to think that there is a lack of clarity or precision.  For the same reason there is no ambiguity.  The Trade Mark as shown is clear, precise, self-contained, easily accessible, intelligible, durable and objective.  The Sieckmann criteria are satisfied.

102.

Iceland’s final point was that there are colours in the visual representation which are not strictly either gold or black.  That is true, but to my eye the impression delivered by the visual representation is of a trade mark coloured gold with shading.  The shading is in approximations of black.

103.

In my judgment, arriving at the conclusion that the verbal representation in the registration of the Trade Mark is inconsistent with the written description would need an assumed degree of pedantry on the part of the competent authorities and the public which, if required in law, would make the trade mark system unworkable.”

Iceland appeals on six grounds:

Counsel for Babek submitted that the judge’s decision was an evaluative assessment and thus this Court could only intervene if he erred in law or in principle, which includes a gap in logic, a lack of consistency or a failure to take into account a material factor that undermines the cogency of the conclusion, it not being enough that this Court might have reached a different conclusion: see Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8, [2024] Bus LR 532 at [46]-[50] (Lord Briggs and Lord Kitchin) and Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25 at [94]-[95] (Lord Briggs and Lord Stephens). Counsel for Iceland disputed this, and submitted that there could only be one right answer to the question of whether the Trade Mark complied with the first and second conditions for registrability. I am inclined to agree with the latter proposition, but for reasons that will appear it is not necessary to decide this question.

As I have explained, the judge applied the “capacity to distinguish” test which he had previously applied in Sainsbury. Iceland contends that this test is legally erroneous. I agree with this. As discussed above, the three conditions in Article 2 of the Directive, Article 4 of the Regulation and section 1(1) of the 1994 Act are independent and cumulative conditions. Furthermore, whether something is a sign and whether it is sufficiently clearly and precisely represented are logically anterior questions to the question whether it has a capacity to distinguish. The judge did not refer to Spear v Zynga, I presume because it was not cited to him. In his judgment in that case Sir John Mummery firmly rejected Mattel’s argument that the three conditions could not be viewed independently from each other and that the distinctive character of the trade mark was relevant to the assessment of whether it complied with the first two conditions: see [19], [26], [28] and [33]. Although that argument was framed in terms of acquired distinctive character, the same logic applies to inherent distinctive character, as counsel for Babek rightly accepted.

The fact that the judge applied the wrong test means that this Court must reconsider the issues. It does not necessarily mean that the judge reached the wrong conclusion. Before reconsidering the issues, it is appropriate to consider the other grounds of appeal.

Since I have accepted ground 1, ground 2 does not arise.

It is common ground that, in interpreting the Trade Mark, the court should take into account each of (i) its categorisation by the applicant as a “figurative mark”, (ii) the pictorial representation and (iii) the written description, and that none of these three elements should be given precedence over the other. Iceland contends that the judge erroneously treated the categorisation as a “fixed starting point” which trumped any inconsistency either between the categorisation and the written description or between the written description and the pictorial representation. I do not accept this. In my view the judge did not give any of the three elements precedence, but correctly took them all into account in interpreting the Trade Mark. Whether he reached the correct conclusion is another matter.

Ground 4 is similar to ground 3. Iceland contends that the judge erroneously treated the pictorial representation as taking precedence over the written description. Again, I do not accept this.

Iceland’s principal complaint under this heading is that the judge was wrong to have regard to the Coca-Cola and Tesco registrations. I agree with this. First, those registrations were not in evidence before him (whereas they had been in the Sainsbury case). Secondly, and much more importantly, it is well established that “state of the register” evidence is generally irrelevant, and therefore inadmissible, when considering the validity of a trade mark application or registration: see e.g. British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 305 (Jacob J). When this was put to her in argument, counsel for Babek did not defend the judge’s reference to these registrations, but rather submitted that the judge’s reasoning would be unaffected if the relevant paragraphs of his judgment were omitted. In one sense that is true, but the real problem is that the reference to these registrations formed part of the judge’s erroneous “capacity to distinguish” test, as it had in Sainsbury.

Iceland criticises some of the judge’s comments about the colours in the pictorial representation. In my view these criticisms are no more than nit-picking.

I largely agree with the judge’s interpretation of the Trade Mark. As he said, the applicant’s categorisation of it as a figurative mark is a useful starting point, but it is not determinative. As Hartwall establishes, the categorisation must not be inconsistent with the other elements of the trade mark. Here the pictorial representation is entirely consistent with the categorisation: it depicts a coloured logo. Contrary to Iceland’s case, the written description is not inconsistent with the pictorial representation, nor does it give rise to any ambiguity or doubt about what the subject-matter of the registration is. It is true that the written description refers to BABEK being “embossed”. Taken literally, the word “embossed” could be understood to mean that the letters are “carved or moulded in relief; ornamented with figures in relief; (of figures or ornament) raised, standing out in relief” (Oxford English Dictionary definition), and thus to suggest that the Trade Mark is intended to be a three-dimensional trade mark represented in two dimensions. In context, however, I agree with the judge that the reasonable reader would understand that the word “embossed” was being used to refer to the visual effect created by the shadowing of the letters. The reasonable reader would also appreciate that the shadowing of the studs, the frame around the oval and the silvery highlights were also intended to contribute to that visual effect.

Turning to the references to the colours in the written description, the reasonable reader would understand the words “gold oval” to be an attempt concisely to describe what is depicted in the pictorial representation. As for the words “gold, black”, the reasonable reader would understand that these words had been supplied in response to the requirement imposed by rule 3(5) of the Implementing Regulation to indicate the colours in the trade mark in words, and that they were intended to describe in words the principal colours visible in the pictorial representation.

Thus the Trade Mark complies with the first condition because it is a single sign, namely the sign depicted in the pictorial representation. The one point on which I differ from the judge is that I do not agree with his statement that the Trade Mark is what is shown in the pictorial representation “subject to minor variations in hue”. There is nothing in the written description to suggest that the pictorial representation is merely an example of what is claimed or that it includes variations in hue. Although counsel for Babek sought to defend the judge’s interpretation, she was unable to point to anything in the written description which supports it. As she realistically accepted, moreover, interpreting the Trade Mark in the manner set out above does not prevent Babek from enforcing the Trade Mark against the use of similar, but not identical, signs.

Interpreted in this way, the Trade Mark also complies with the second condition, because it is clear and precise.

For the reasons given above, I would dismiss the appeal.

I agree with the conclusions reached by Arnold LJ and the reasons he gives for them. So far as the reconsideration of the issues is concerned, I agree with Arnold LJ that the reasonable reader would understand the written description to be an attempt concisely to describe what is depicted in the pictorial representation.

The alternative – that the written description is intended to describe a broad category of possible signs, of which the pictorial representation is merely an example – is not tenable in my view. Any attempt to describe the pictorial representation in detail – certainly the sort of detail which Iceland contends would be necessary – would be practically unworkable, given the multiplicity of hues of gold, and the positioning of the subtle variations in light and shade across the sign.

Accordingly, the reasonable reader would appreciate that an applicant who intended, in completing that part of the form requiring a “Description of the mark”, to provide a description of the pictorial representation and no more, would likely do so in summary form, rather than attempting to provide a comprehensive description of all its features. The fact that the applicant could have put this beyond doubt by including the words “as appears in the representation of the mark attached” does not detract from this conclusion.

I agree with both judgments.