Intellectual Property Enterprise Court

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

Fecha: 11-Mar-2025

Iceland’s arguments

Iceland’s arguments

74.

Iceland had six arguments in support of its case that the Trade Mark lacked clarity and precision at the date of registration.

75.

First, despite the Trade Mark being described as a figurative mark, the description includes the word ‘embossed’ which suggests that sign to be protected was a 3D sign in the form of an embossed badge, so that the visual representation was just one image of the sign.

76.

Second, the written description indicates that the sign can be in any oval form, the word BABEK can be in any style of writing and in any position within the oval, and the colours stated could be of any hues.

77.

Third, the verbal description, the visual representation and the colours claimed are inconsistent in that:

(i)

Whereas only the BABEK writing is described as embossed, other elements of the sign are shown to be embossed;

(ii)

The description says that the sign is an oval, but it is shown as an ellipse;

(iii)

The description proper does not mention the claimed colour black;

(iv)

Although black is claimed, the visual representation does not feature black, only shadow effects.

78.

Fourth, the claim to the colour gold is not specific as to hue and many hues are shown in the visual representation.

79.

Fifth, the claim to the colour black is not specific as to hue. The colour black does not appear in the visual representation.

80.

Sixth, the visual representation includes colours other than gold and black, namely white, yellow, orange, beige and brown.