Court of Appeal dismisses Iceland’s appeal in BABEK trade mark dispute

Tom Griffin, Solicitor

Babek International Limited is the proprietor of a UK trade mark registration for a figurative mark, which consists of a gold oval embossed with the word BABEK (the “Mark”), for, amongst other things, meat, fish, poultry, and game (the “Registration”).

The Registration contains the following description: “Gold oval with embossed BABEK writing. Colour Claimed : Gold, black”.  The inclusion of such a description is optional when applying for a UK trade mark.  Pertinent to this dispute is the relationship between the graphical representation of the Mark and the description.

Iceland, earlier this year, unsuccessfully applied for summary judgment in its counterclaim that the Registration is invalid because the Mark does not satisfy the requirements of s1(1) Trade Marks Act 1994 (which consists of three independent and cumulative conditions).  The conditions are that the subject matter of a trade mark application or registration must be:

(i) a sign;

(ii) capable of being represented graphically and

(iii) capable of distinguishing the goods or services of one undertaking from those of other undertakings.

The judge held that the Mark did satisfy s1(1) Trade Marks Act 1994 and, resultingly, that the Registration is valid.  Iceland appealed against this decision.

The Court of Appeal, in its judgment, re-iterated the following important points.  First, that the three conditions set out above are independent and cumulative.  Second, that in interpreting a trade mark, the court should take into account each of:

(i) its categorisation (in this case, as a figurative mark);

(ii) its graphical representation; and

(iii) the description, and that none of these should take precedence over the other.

In conclusion, whilst largely agreeing with the first instance judge’s interpretation of the Mark, the Court of Appeal dismissed Iceland’s appeal.  It held that the Mark consisted of a single sign, namely that depicted in the graphical representation, and what is shown in the graphical representation is not subject to minor variations in hue (and, resultingly, is clear and precise).

If you any queries relating to trade mark registration, subsistence, infringement or revocation, please contact one of our intellectual property solicitors on 0161 832 3434.