CA-2025-000801 - [2025] EWCA Civ 1341

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.