What's the issue?

• The High Court of England and Wales (Intellectual Property Enterprise Court - IPEC) has considered another case involving trade mark descriptions. 

• Trade mark descriptions are generally used to explain what protection is sought in relation to non-traditional trade marks such as colour, sound, shape and hologram marks. They help to define the mark in question. 

• However, problems can arise where the description is not clear and precise or does not match the visual representation of the mark. In some instances, it has proved very difficult for brand owners to use descriptions in a way that meets these criteria - for example, the series of cases involving Cadbury's purple have illustrated how difficult it can be to describe colour marks as applied to goods. 

• In the present case, the court rejected an application by Iceland Foods to invalidate a UK trade mark registration for "BABEK" logo (depicted below), holding that the description of the mark does not lack clarity and precision.

• In what will be a relief to many brand owners, the Court took a fairly liberal approach to assessing the description and concluded that the description was clear and did not contradict the visual representation of the mark. 

• Nonetheless, descriptions must be drafted very carefully (or omitted if not necessary) as they can easily be picked over by third parties and a source for possible invalidity attacks.

Want to know more?

The claim

Babek International is the proprietor of UK registration no. 907527963 for the "BABEK" logo (above), which is registered in classes 29 (food and drink) and 42 (scientific and technological services and research). Babek included a description of the mark in its application, namely “Gold oval with embossed BABEK writing. Colour Claimed: Gold, black.” It claimed that the mark was figurative.

In this action, Babek sued Iceland for infringing its trade mark registration by selling goods bearing its mark. Iceland filed a counterclaim invalidation action, arguing, in essence, that Babek's registration lacked clarity and precision and was therefore registered contrary to section 1(1) and 3(1)(a) of the Trade Marks Act 1994. Both of these provisions prohibit the registration of signs which are not capable of being represented on the register in such a manner as to enable the public to determine the clear and precise subject matter of protection.

Iceland based their claim on the criteria laid down in the EU Sieckmann case, which expands on section 1(1) and provides that the representation of a trade mark must be "clear, precise, self-contained, easily accessible, intelligible, durable and objective."

Why did Iceland say that the mark lacked clarity and precision?

Iceland argued the following points:  

• The trade mark was described as figurative, but the inclusion of the word 'embossed' in the description suggests that the sign should be protected as a 3D mark.

• The description did not specify the style or position of the word BABEK, and the colours stated could be of any hues.

• The description, visual representation and colours claimed are inconsistent in that: (a)the description refers only to BABEK as embossed, however, other elements of the mark are shown to be embossed, (b)the mark is an ellipse, not an oval, (c)the description does not mention the claimed colour black, (d)although black is claimed, the visual representation does not feature black as a colour, only shadow effects.

• The claim to the colour gold is not specific to hue, and there are multiple hues shown in the mark.

• The mark includes colours other than those included in the description (gold and black).

Decision

The judge ruled in favour of Babek, referring to Iceland's ellipse argument as "high grade pedantry", and dismissing several of their arguments in a similar vein, including the 3D mark argument. The judge did not find ambiguity in the visual representation of the mark with description, stating that the competent authorities and the public would view the mark as figurative despite the word 'embossed'.

In addition, it was ruled that a description does not need to accurately describe each individual element of the mark. The inclusion of additional colours other than those listed did not change the overall impression delivered by the visual representation in this case.

The judge also considered the use of the name of the colours in the description, rather than the Pantone/Hex codes. Whilst Iceland found 25 hues of gold in the representation, the judge did not find that this created ambiguity, and pointed to other marks in which colours were claimed without reference to Pantone codes eg registrations by Coca Cola and Tesco.

To conclude, the judge stated that the trade mark satisfied the statutory requirements of clarity and precision and so was validly registered.

What does this mean for you?

• This is an important case which reiterates the fundamental registrability requirements of a trade mark, and highlights the importance of ensuring clarity and precision in trade mark registrations.

• This case also emphasises the possible risks of trade mark descriptions - if not drafted correctly, they can cast doubt on the validity of the registration. 

• Trade mark owners must ensure that the visual representations of their marks are consistent with any written descriptions (or omit any unnecessary descriptions). 

This article was written by Aaron Wyness.