IP-2024-000037 - [2025] EWHC 547 (IPEC)

It seems to me that, as was the case in Glaxo, the statement of the type of mark in the registration is a useful starting point. The statement was not ambiguous. The reader was told that it is a figurative mark. Here for convenience I use ‘reader’ as a compendious term for the competent authorities and the public.

In my view there is nothing inconsistent between this statement and the visual representation. The reader is told that this is a figurative mark and therefore a 2D mark, not a 3D mark. Accordingly, the visual representation could be and would have been understood to show a 2D mark with 3D visual effects. Such effects were hardly new in visual art.

The written description is not inconsistent with this either. ‘Embossed BABEK writing’ could, and in my view would, have been understood to mean that BABEK is represented with an embossed appearance, including shadows.

It is correct to say that in the visual representation the studs and the border are also shown have shadows to give a 3D effect. Arguably the same could be said of the textured background. Had the written description stated that only the BABEK writing is embossed, or alternatively that the studs and border are not embossed, there may have been a difficulty. As it is, I think the reader would have understood that the embossing effect is of principal significance in relation to the BABEK writing, and so it appears from the visual representation. Of less significance to the distinctiveness of the mark are the studs, border and textured background.

It was said that this nonetheless leaves the mark ambiguous since the reader would have been uncertain whether the studs, border and textured background should appear embossed or not. Such an argument suggests that a written description, if present, must always describe what is shown in the visual representation in every particular, with no detail left unsaid. I reject such an approach. I see no reason to suppose that the competent authorities and the public of s.1(1)(a) should be taken to consist of anxious pedants. A reasonable reader would have understood that important features will be referred to in the written description, while further and minor details appearing in the visual representation may not be.

Commission Regulation (EC) 2868/95 as amended permitted the filing of a trade mark application with no written description. The applicant for the Trade Mark could have done that. However, it does not alter the position that if a written description is filed it is to be interpreted by reference both to the visual representation and any statement as to the type of mark for which protection is sought. For the reasons I have given, the reasonable reader would have understood what was intended.

It was also said by Iceland that the alleged ambiguity leads to a multitude of forms. Since I have found no ambiguity, there are no alternative forms.

Iceland complains that the visual representation shows an ellipse, not an oval as stated in the written description. I regard that as fairly high grade pedantry.

Iceland points out that the oval is described as gold but the colours claimed are both gold and black. However, the description also says that the word BABEK is embossed. To create the embossed effect there are shadows, which accounts for the reference to black.

Iceland’s next point is that there is no true black shown. Considered over-literally that is true. But there is no inconsistency. A reasonable reader would understand that what is meant by black are the dark shadows, which could not sensibly be described as gold in colour and are approximately black.

Iceland was able to find 25 pantone hues which, it says, might all be described as hues of gold, in metallic and non-metallic varieties. The same argument was made in respect of black, for which 18 pantone hues were found. Looking at these as presented at the hearing I am not sure that they could all be described as gold or black, but this is not to the point.

Libertel, Robert McBride, Calor Gas and Sainsbury were cases in which, on the facts, it was necessary to identify the hue of the colour claimed in order to satisfy the Sieckmann criteria. In the instance of any colour per se mark, use of one or more pantone numbers or other means to specify hues is likely to be important. For other types of mark which feature one or more colours, it may or may not be.

One aspect of the judgment in Sainsbury received attention from both sides in the present case. Counsel for the trade mark proprietor in Sainsbury said that ‘vast swathes’ of marks in the UK registry would become vulnerable to a declaration of invalidity if the mark in issue was found to be invalid. Copies of the registrations of a very large number trade marks were filed in evidence to make that point good. By agreement, some were considered de bene esse and two were discussed in the judgment. One took the form of the words Coca Cola in their familiar script against a stylised background. The description stated: ‘The applicant claims the colours red, silver, white and yellow as an element of the mark.’ This was the visual representation:

The other had the description ‘The applicant claims the colours red and blue as an element of the mark’ and this representation:

In neither case was there precision about the hue of any of the colours claimed, whether by pantone numbers or otherwise.

So far as I am aware, since the registration of these two marks no finding has been made about the validity of either and I am not in a position to make a ruling about them. However, in Sainsbury this observation was made:

There, the equivalent of s.1(1)(b) was being addressed. I think that the observation made in that paragraph could equally be said of the Trade Mark in this case.

In relation to s.1(1)(a), in my view the reasonable reader of the registration of the Trade Mark would have understood that the mark is a figurative mark as shown in the visual representation. The written description does not tell the reader much more save that the embossed effect used for the BABEK writing is of particular significance. The lack of much further information need not matter, provided there is no inconsistency. The colours of the Trade Mark are as shown in the visual representation. It was not necessary for the competent authorities or the public to be informed of pantone numbers because precise hues are not important to making the Trade Mark to satisfy the Sieckmann criteria. Aside from that, the shading of one colour to another in the visual representation would unhelpfully require a long list of pantone numbers.

Looking at this in more detail, the absence of pantone numbers does not lead to the result that the Trade Mark has multiple forms. It has one single form, that shown in the visual representation, subject to minor variations in hue which would not lead the reasonable reader to think that there is a lack of clarity or precision. For the same reason there is no ambiguity. The Trade Mark as shown is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The Sieckmann criteria are satisfied.

Iceland’s final point was that there are colours in the visual representation which are not strictly either gold or black. That is true, but to my eye the impression delivered by the visual representation is of a trade mark coloured gold with shading. The shading is in approximations of black.

In my judgment, arriving at the conclusion that the verbal representation in the registration of the Trade Mark is inconsistent with the written description would need an assumed degree of pedantry on the part of the competent authorities and the public which, if required in law, would make the trade mark system unworkable.