Jennifer Dixon appeared for the successful Claimant, Babek International Limited (“Babek”), in the Defendant, Iceland Foods Limited’s (“Iceland”), application for summary judgment on its counterclaim for a declaration of invalidity against Babek’s registered trade mark (the “Trade Mark”. Iceland alleged that the registration of the Trade Mark was not in conformity with ss.1(1) and 3(1) of the Trade Marks Act 1994 and should be declared invalid pursuant to s.47(1).
HHJ Hacon held in favour of Babek and refused Iceland’s application for summary judgment. He declared that the Trade Mark was valid and that, when registered, it satisfied the requirements of s.1(1) of the 1994 Act, and was not registered in breach of s.3. HHJ Hacon held that the Trade Mark satisfied the Sieckmann criteria, in that it was clear, precise, self-contained, accessible, intelligible, durable and objective.
Iceland ran six separate arguments in support of its case that the Trade Mark lacked clarity and precision, including arguments to the effect that the verbal description, visual representation and colours claimed were inconsistent. The written description of the Trade Mark was found to be consistent with the visual representation, in particular the term ‘Embossed BABEK writing’, and the visual representation as a 2D mark with 3D visual effects, were found to be consistent with the statement that the Trade Mark is a figurative mark.
As a general point, HHJ Hacon remarked that the competent authorities and the public of s.1(1)(a) should not be taken to consist of anxious pedants, and therefore, minor details in the visual representation need not be referred to in the written description. The reader of the register would understand the figurative mark to be as displayed in the visual depiction, and that the written description (which was not inconsistent) explained that the embossed effect was of particular significance. Further, it was not necessary for the competent authorities or the public to be informed of the precise hues or the pantone numbers (which in any event might require an unhelpfully long list of pantone numbers) because the precise hues used were not important to the Trade Mark satisfying the Sieckmann criteria.