The Court of Appeal has dismissed an appeal by Iceland Foods Limited and confirmed the validity of the Babek trade mark, marking a significant victory for our client, Babek International Limited.
The dispute arose from infringement proceedings brought by Babek International against Iceland Foods, which had admitted selling goods bearing the sign Babek. Iceland contended, however, that those sales were authorised, either with the consent of a former proprietor of the trade mark or pursuant to a licence. In parallel, Iceland counterclaimed for a declaration that the Babek trade mark registration was invalid, alleging that it lacked sufficient clarity and precision.
At first instance, the case was heard by HHJ Hacon sitting in the Intellectual Property Enterprise Court (IPEC). The judge rejected Iceland’s arguments and upheld the validity of the Babek trade mark. In a robust judgment, HHJ Hacon characterised Iceland’s submissions as “high grade pedantry”, observing that if the degree of precision demanded by Iceland were required by law, it would render the trade mark system “unworkable”.
Iceland appealed to the Court of Appeal, arguing in particular that the Babek trade mark failed to meet the required standards of clarity and precision due to the absence of defined colour hues and alleged inconsistencies in its visual representation.
The Court of Appeal has now dismissed the appeal in its entirety. While it revisited the legal test applied at first instance, the Court concluded that the Babek trade mark clearly satisfied the requirements for registration and protection. The criticisms advanced by Iceland in relation to colour specification and visual consistency were firmly rejected.
This decision represents an important and welcome outcome for our client. With the validity of the Babek trade mark now confirmed at appellate level, the infringement proceedings—which had been stayed pending the appeal—will return to the High Court to be determined.
The Court of Appeal judgment can be accessed here:
https://drive.google.com/file/d/16cap2x0mzI5b4U5uEWfSXF9WCHwc1WYV/view?usp=sharing