The Court of Appeal (CoA) upheld the validity of a figurative trade mark that had been challenged on the grounds that its pictorial representation and verbal description failed to meet the required standards of clarity and precision.
Facts:
The case concerns an appeal by the defendant, Iceland, against an Intellectual Property Enterprise Court (IPEC) decision that upheld the validity of a trade mark owned by the claimant, Babek. The trade mark in question is a figurative mark that took effect on 16 January 2009.
This mark replaced an earlier EU (Community) trade mark as a result of Brexit, given that the UK and EU agreed to respect pre-existing trade marks registered prior to January 1st 2021, making it a "comparable" UK trade mark. The mark consists of a pictorial representation (a logo) and an accompanying written description filed by the applicant: "Gold oval with embossed BABEK writing". The colours claimed were "gold and black".
Iceland sought a declaration that the mark was invalidly registered, contending that it failed to comply with the legal requirements for registrability under the 2009 legislation (primarily Article 2 of the Trade Marks Directive 2015, requiring a sign to be capable of being represented graphically in a clear and precise manner). Iceland argued that the combination of the pictorial representation and the description was too ambiguous, potentially describing a multiplicity of signs.
The IPEC Judge dismissed Iceland's challenge, concluding that the mark was valid. Iceland appealed to the CoA.
Decision:
The CoA dismissed the appeal, upholding the validity of Babek's trade mark. Despite finding that the Lower Court Judge (HHJ Hacon) applied the wrong legal test (Ground 1), Lord Justice Arnold's own reconsideration of the issues nonetheless led him to the same conclusion – that the trade mark is valid.
The Court's decision hinged on the interpretation of the trade mark by a "reasonable reader," concluding that the combination of the pictorial representation and the written description defined a single sign with sufficient clarity. There was no inconsistency among the mark's categorisation as a "figurative mark" (a two-dimensional image), the pictorial representation, and the written description. The words "gold oval" and "gold, black" were interpreted as a concise description of the principal colours visible in the pictorial representation, fulfilling the requirement under Rule 3(5) of the Implementing Regulation.
The mark satisfied the first condition because it was a single sign. Lord Justice Arnold clarified that the mark did not include variations in hue, explicitly disagreeing with the Lower Judge's finding that the mark was subject to "minor variations in hue," stating there was nothing in the written description to suggest the picture was merely an example. By limiting the claim to the image shown, the mark avoided becoming a multiplicity of signs, unlike those rejected in cases such as Nestlé v Cadbury. The mark also satisfied the second condition (the so-called Sieckmann criteria) because it was clear and precise.
Implications:
The case reinforces the strict standard required for the graphic representation of trade marks under the Sieckmann criteria (i.e., that they should be clear, precise, and objective, inter alia), especially for those marks involving colour and device features. The ruling strongly affirms that a trade mark must define a single, specific sign, and not a broad, undefined category or "multiplicity of signs".
The Court validated the practice of using a concise verbal description to summarise a complex pictorial element. Unless the description explicitly claims a range of colours or hues, a registered mark consisting of a specific pictorial representation is fixed to the appearance of that representation.
