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

I largely agree with the judge’s interpretation of the Trade Mark. As he said, the applicant’s categorisation of it as a figurative mark is a useful starting point, but it is not determinative. As Hartwall establishes, the categorisation must not be inconsistent with the other elements of the trade mark. Here the pictorial representation is entirely consistent with the categorisation: it depicts a coloured logo. Contrary to Iceland’s case, the written description is not inconsistent with the pictorial representation, nor does it give rise to any ambiguity or doubt about what the subject-matter of the registration is. It is true that the written description refers to BABEK being “embossed”. Taken literally, the word “embossed” could be understood to mean that the letters are “carved or moulded in relief; ornamented with figures in relief; (of figures or ornament) raised, standing out in relief” (Oxford English Dictionary definition), and thus to suggest that the Trade Mark is intended to be a three-dimensional trade mark represented in two dimensions. In context, however, I agree with the judge that the reasonable reader would understand that the word “embossed” was being used to refer to the visual effect created by the shadowing of the letters. The reasonable reader would also appreciate that the shadowing of the studs, the frame around the oval and the silvery highlights were also intended to contribute to that visual effect.

Turning to the references to the colours in the written description, the reasonable reader would understand the words “gold oval” to be an attempt concisely to describe what is depicted in the pictorial representation. As for the words “gold, black”, the reasonable reader would understand that these words had been supplied in response to the requirement imposed by rule 3(5) of the Implementing Regulation to indicate the colours in the trade mark in words, and that they were intended to describe in words the principal colours visible in the pictorial representation.

Thus the Trade Mark complies with the first condition because it is a single sign, namely the sign depicted in the pictorial representation. The one point on which I differ from the judge is that I do not agree with his statement that the Trade Mark is what is shown in the pictorial representation “subject to minor variations in hue”. There is nothing in the written description to suggest that the pictorial representation is merely an example of what is claimed or that it includes variations in hue. Although counsel for Babek sought to defend the judge’s interpretation, she was unable to point to anything in the written description which supports it. As she realistically accepted, moreover, interpreting the Trade Mark in the manner set out above does not prevent Babek from enforcing the Trade Mark against the use of similar, but not identical, signs.

Interpreted in this way, the Trade Mark also complies with the second condition, because it is clear and precise.