http://ipkitten.blogspot.com/2025/03/late-night-babek-uk-court-upholds.html
The UK’s Intellectual Property Enterprise Court (IPEC) has
declined an attempt by a defendant (Iceland Foods) to invalidate a trade mark
owned by the claimant (Babek) in an application for summary judgment. The
judgment carefully considers some of the issues around how trade marks are
described and presented on the register, with the court finding that the mark
was validly registered: Babek
International Ltd v Iceland Foods Ltd [2025] EWHC 547 (IPEC)
What is the case about?
The mark in question was a figurative mark containing the
word KEBAB spelt backwards (BABEK):
| UK registered trade mark no. 907527963 |
The mark is registered in respect of, among other things,
food and drink. The mark carried the curious description of “Gold oval with
embossed BABEK writing. Colour Claimed: Gold, black.”. That description is
curious for a number of reasons, not least that the mark barely, if at all,
contains the colour black.
Iceland Foods (the retailer with no connection to the
Northern Atlantic country – see [here])
is selling a product bearing the mark, allegedly under a licence from a third
party. That third party has been joined to the proceedings by Iceland as an
additional defendant.
What was the hearing about?
Quite unusually, Iceland applied for summary judgment on
its counterclaim for invalidity. For non-UK litigator readers, summary judgment
is available as an interim remedy where a claim has no real prospect of success
and there is no other compelling reason why the claim should go to trial. The
tight cost capping in the IPEC limits the risk for a party in seeking summary
judgment, making it a more attractive option in that court.
The most common objection to summary judgment is that
tested evidence would be needed. It was possible in this case as its attack was
focused on the mark + description, so it did not require evidence or a
‘mini-trial’. The issue was a quite focused challenge to the validity of the
mark.
What were the grounds for attack?
Iceland argued that the mark failed to comply with s.1(1)
of the Trade Marks Act (equivalent of Article 3 of the EU Trade Marks
Directive). The attack was based on the famous Sieckmann
criteria [Case
C-273/00], i.e. that the mark was insufficiently clear, precise, etc.).
That complaint focused on the claims that:
·
The mark was described as figurative, but could
be understood as a 3D mark;
·
The description did not specify the
style/location of the writing;
·
Neither did it specify the colours or the hues;
·
The embossing was not just applied to the
letters;
·
It was an ellipse not an oval;
·
Despite black being claimed the black was
actually a shadow;
·
Colours other than black and gold were included.
What was decided?
Some of the complaints were questionable at best; the
judge referred to the oval vs. ellipse argument as “fairly high grade pedantry”,
and used the root pedant three times. Other of the challenges were similarly
dismissed, including that the mark was not a 3D mark just because it had
elements that appeared and were described as 3D (‘embossed’). Similarly, the
judge rejected the suggestion that a description must accurately describe every
element of the sign. This could be contrasted with the position where the
description is inconsistent with the graphical representation or is by its
nature unclear (e.g. the use of the word ‘predominantly’ in the Cadbury Purple
case [IPKat
post here]).
One interesting point is the consideration of the use of
the name of a colour rather than the Pantone/Hex code. This is a point that has
come up occasionally, including in the Sainsburys v Babybel case [IPKat
post here] where the mark consisting of an image of the red coating of
the Babybel product was considered insufficiently precise. (Disclaimer: this
Kat’s firm acted for Sainsbury’s in that case.) The judge in Babek decided
that the case could be distinguished from those where the hue is needed to
satisfy the requirement that the mark distinguish a particular trade. This is
sensible in preventing an overly technical approach to trade mark
registrations.
There are some other interesting points in the case,
including the impact of that apparently never-ending issue of Brexit. The judge
took a pragmatic view that Brexit did not complicate matters by raising the
prospect of the differing requirements to describe what type of mark a mark is
could result in different tests being applied.
What does it mean?
A mentor of this Kat once made the comment that a plate of
salmon hors d’oeuvres (good arguments) should not be tainted by the presence of
a dead mouse (bad ones). That analogy seems apt. Lots of arguments were put
forward because none of them were knockouts, making the better ones less
appealing. It is a difficult line to tread in practice though; one never wants
to leave something in the locker.
Trade mark proprietors and their advisers will be pleased
to see a sensible approach being taken to interpreting trade mark
registrations. The case does, however, highlight a long-running issue with
trade mark descriptions. Often, as in this case, they add very little.
Sometimes though, the description conflicts with or casts doubt on the
registration, potentially rendering them invalid. This has caught out many a
brand, and this Kat thinks that the best approach is often to say as little in
the description as is feasibly possible. Interestingly, practice in other
jurisdictions often differs, so a joined-up, consultative approach between
international advisers is called for.
From a litigation perspective, the claim now proceeds on
the basis that the mark is validly registered. There appears to be a dispute as
to the right of the additional defendant to grant the licence Iceland relied
on. The case highlights the opportunity to take certain issues out of a case at
an early stage so as to narrow the issues, and often encourage settlement.
Postscript:
For those interested in late night nourishment, and the characteristics of
patrons of establishments supplying it, the Morley’s fried chicken case concerning
whether average consumers can be intoxicated is being heard in the Court of
Appeal on Friday.
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