Babek had a registration for the mark BABEK (which is ‘kebab’ spelt backwards) and is described as a ‘gold oval with embossed BABEK writing’ and has a colour claim of gold and black. 

Iceland’s claim was that the mark failed to comply with Sections 1(1) and 3(1) of the Trade Marks Act 1994 and should therefore be declared invalid following Section 47(1). 

The decision focuses on the Sieckmann criteria and whether the interaction between the visual representation of the mark and its verbal description made the registration insufficiently clear and precise. Iceland launched a very creative attack on what, on the surface, seemed to be a fairly open and shut infringement case.

Overview

Iceland’s arguments were split into the following catergories, attacking every aspect of the actual composition of the mark in turn: 

• Figurative and 3D

Iceland relied on Deichmann v EUIPO, in which it states that the scope of protection of a mark isn’t determined by its categorisation, but rather how it is perceived by the public, to argue that Babek’s mark, which is described as figurative mark, could also be understood as a 3D mark due to the reference to ‘emboss[ing]’ in the description of the mark. 

However, it was held that there was nothing inconsistent between this statement and the visual representation. The visual representation could be, and would have been, understood to show a 2D mark with 3D visual effects.

• Position

Iceland then tried to attack the position of the mark, by citing Thom Browne, and arguing that description did not specify the style/location of the writing “BABEK” and therefore was not clear and precise enough to be identifiable and therefore to denote origin and allow a consumer to make a repeat purchase. 

However, the court found that a mark could have a number of possible “variations and permutations” and this point, on its own, did not render the mark invalid. 

• Colours

Next, Iceland argued that the description did not specify the colours or the hues of the mark. Iceland even went as far as to try and argue that although ‘black’ was being claimed, the black was actually a shadow and that colours other than black and gold were included.

The judgement emphasizes that trade marks are meant to be interpreted by real-life, reasonable people and that Iceland has taken the letter of the law over-literally, in a way that cannot be sensibly applied to real life situations and businesses.  

Clarity

Finally, in much the same vein as the above, Iceland tried to argue that Babek’s mark was not clear and precise on the basis that their mark was a) an ellipse not an oval; and, b) that embossing was not just applied to the letters.

On these points, the judgement dismissed Iceland’s arguments as “fairly high-grade pedantry”.

Summary

Iceland should be applauded for their innovative and creative approach. However, it didn’t work, on this occasion, and trade mark owners should breathe a sigh of relief that the registry took a common-sense view on some of Iceland’s more inventive lines of argument. 

The decision criticises Iceland’s “high-grade pedantry” and is a refreshing reminder that the trade mark register is meant to be used by real people and businesses, and interpretable for all.