BC Law Ltd is pleased to announce a great win for our client, Babek International Limited, in a trademark infringement claim before the Intellectual Property Enterprise Court (IPEC).
IPEC has declined an attempt by Iceland Foods Limited (Defendant) to invalidate a trade mark owned by Babek International Limited (the Claimant) in an application for summary judgment. The court found that the mark was validly registered: Babek International Ltd v Iceland Foods Ltd [2025] EWHC 547 (IPEC).
This case arises from Babek International Limited (represented by BC Law Ltd) suing Iceland Foods Limited for infringement of a UK-registered trade mark. The trade mark in question is a gold oval with embossed “BABEK” writing, derived from an EU trade mark post-Brexit.
Iceland admitted to selling goods bearing a sign identical to the trade mark but argued that the sales were made with the consent of a former proprietor or under a licence. Iceland sought a declaration of invalidity, claiming that the trade mark registration was not in conformity with the Trade Marks Act 1994.
Iceland contended that the trade mark lacked clarity and precision, citing inconsistencies between the visual representation and the written description, as well as ambiguity in the colours and forms. They claimed that the trade mark did not meet the requirements of the Trade Marks Act 1994.
Judge Hacon reviewed case law and statutory requirements, focusing on whether the trade mark was ambiguous or had multiple forms. He concluded that the trade mark was clear, precise, and met the necessary criteria. The visual representation and written description were found to be consistent, and the trade mark did not require specific hues for the colours claimed.
Iceland’s arguments in support of invalidating the trade mark were described as displaying a “high grade pedantry” (para 90), requiring the competent authorities and the public to be “anxious pedants” (para 87), or necessitating an “assumed degree of pedantry” which, if required by law, would render the trade mark system “unworkable” (para 103).
Ultimately, the judge ruled that the trade mark was validly registered and satisfied the requirements of the Trade Marks Act 1994. Iceland’s application for summary judgment declaring the trade mark invalid was dismissed.
Earlier in the proceedings, Iceland had applied to the UKIPO for the cancellation (later dropped) and invalidation of the trade mark and sought a stay of proceedings in the IPEC to defer the matter to the UKIPO’s resolution. However, the court dismissed the stay application on 13 June 2024. The claim will now proceed on the basis that the mark is validly registered, and it appears Iceland will seek to argue that sales were made with the consent of a former proprietor or under a licence.
For the judgment delivered by IPEC see:
https://drive.google.com/file/d/1WMmjOiTh9YYu6XAkI5VBcer_ui9VGSJx/view?usp=sharing