Babek International v Iceland Foods: Court of Appeal clarifies trademark representation requirements

The Court of Appeal has dismissed an appeal by Iceland Foods Limited challenging the validity of a United Kingdom registered trademark owned by Babek International Limited. The decision, handed down on 23 October 2025, provides important clarification on the interpretation of trademark registrations that include both pictorial representations and written descriptions.

Iceland had sought summary judgement declaring that UK Registered Trade Mark No.00907527963 was invalidly registered. The trademark, registered with effect from 16 January 2009, comprises a gold oval with embossed "BABEK" writing in Classes 29 and 42.

The appeal arose from His Honour Judge Hacon's earlier decision in the Intellectual Property Enterprise Court rejecting Iceland's contention that the mark failed to meet the conditions for registrability.

The central issue

The dispute centred on the relationship between the trademark's pictorial representation and its written description. When the application was filed, the form described the mark as "Gold Oval with Embossed BABEK writing" with colours claimed as "Gold and Black". Iceland argued that inconsistencies between this written description and the pictorial representation rendered the trademark invalid.

Lord Justice Arnold, delivering the leading judgement, first addressed Iceland's submission that the judge below had applied an erroneous "capacity to distinguish" test. The Court agreed with this ground of appeal, confirming that the three conditions in Article 2 of the Directive—that a trademark must be a sign, capable of graphical representation, and capable of distinguishing goods or services—are independent and cumulative conditions. Whether something is a sign and whether it is sufficiently clearly and precisely represented are logically anterior questions to whether it has capacity to distinguish.

Despite finding error in the judge's test, the Court proceeded to reconsider the substantive issues and reached the same conclusion through correct legal analysis.

Interpretation of trademark elements

The Court emphasised that when interpreting a trademark registration, three elements must be considered without giving precedence to any: the applicant's categorisation (here as a "figurative mark"), the pictorial representation, and the written description. The Court rejected Iceland's argument that the written description created ambiguity about the trademark's scope.

Addressing Iceland's specific complaints, Lord Justice Arnold held that the reasonable reader would understand "embossed" not as suggesting a three-dimensional mark but as referring to the visual effect created by the shadowing of the letters. Similarly, the reference to "gold oval" and "gold, black" would be understood as a concise description of what appeared in the pictorial representation, with the colour words supplied to comply with regulatory requirements.

The Court determined that the trademark constitutes a single sign—that depicted in the pictorial representation. Notably, Lord Justice Arnold diverged from the judge's interpretation on one point, rejecting the suggestion that the mark included "minor variations in hue". The written description contained nothing to suggest the pictorial representation was merely an example or that it encompassed variations in hue.

State of register evidence

The Court also addressed Iceland's complaint that the judge had improperly relied on other trademark registrations, namely those held by Coca-Cola and Tesco. Lord Justice Arnold agreed this was erroneous, reaffirming the well-established principle that state of register evidence is generally irrelevant and inadmissible when considering trademark validity.

Applying the correct legal framework, the Court concluded that the trademark satisfied both the first condition (being a single sign) and the second condition (being clear and precise). The written description, properly interpreted, did not create ambiguity but rather concisely described the pictorial representation.

Lord Justices Zacaroli and Newey concurred, with Lord Justice Zacaroli emphasising that requiring detailed descriptions of every hue and shadow variation would be practically unworkable. A reasonable reader would appreciate that an applicant describing a pictorial representation would likely do so in summary form rather than attempting comprehensive detail of all features.

The appeal was dismissed, upholding the trademark's validity and confirming the practical approach to interpreting trademark registrations where pictorial and written elements coexist.