Late night BABEK – UK court upholds validity of kebab trade mark

The UK’s Intellectual Property Enterprise Court (IPEC) has declined an attempt by a defendant (Iceland Foods) to invalidate a trade mark owned by the claimant (Babek) in an application for summary judgment. The judgment carefully considers some of the issues around how trade marks are described and presented on the register, with the court finding that the mark was validly registered: Babek International Ltd v Iceland Foods Ltd [2025] EWHC 547 (IPEC)

What is the case about?

The mark in question was a figurative mark containing the word KEBAB spelt backwards (BABEK):

UK registered trade mark no. 907527963

The mark is registered in respect of, among other things, food and drink. The mark carried the curious description of “Gold oval with embossed BABEK writing. Colour Claimed: Gold, black.”. That description is curious for a number of reasons, not least that the mark barely, if at all, contains the colour black.

Iceland Foods (the retailer with no connection to the Northern Atlantic country – see [here]) is selling a product bearing the mark, allegedly under a licence from a third party. That third party has been joined to the proceedings by Iceland as an additional defendant.

What was the hearing about?

Quite unusually, Iceland applied for summary judgment on its counterclaim for invalidity. For non-UK litigator readers, summary judgment is available as an interim remedy where a claim has no real prospect of success and there is no other compelling reason why the claim should go to trial. The tight cost capping in the IPEC limits the risk for a party in seeking summary judgment, making it a more attractive option in that court.

The most common objection to summary judgment is that tested evidence would be needed. It was possible in this case as its attack was focused on the mark + description, so it did not require evidence or a ‘mini-trial’. The issue was a quite focused challenge to the validity of the mark.

What were the grounds for attack?

Iceland argued that the mark failed to comply with s.1(1) of the Trade Marks Act (equivalent of Article 3 of the EU Trade Marks Directive). The attack was based on the famous Sieckmann criteria [Case C-273/00], i.e. that the mark was insufficiently clear, precise, etc.). That complaint focused on the claims that:

·         The mark was described as figurative, but could be understood as a 3D mark;

·         The description did not specify the style/location of the writing;

·         Neither did it specify the colours or the hues;

·         The embossing was not just applied to the letters;

·         It was an ellipse not an oval;

·         Despite black being claimed the black was actually a shadow;

·         Colours other than black and gold were included.

What was decided?

Some of the complaints were questionable at best; the judge referred to the oval vs. ellipse argument as “fairly high grade pedantry”, and used the root pedant three times. Other of the challenges were similarly dismissed, including that the mark was not a 3D mark just because it had elements that appeared and were described as 3D (‘embossed’). Similarly, the judge rejected the suggestion that a description must accurately describe every element of the sign. This could be contrasted with the position where the description is inconsistent with the graphical representation or is by its nature unclear (e.g. the use of the word ‘predominantly’ in the Cadbury Purple case [IPKat post here]). 

One interesting point is the consideration of the use of the name of a colour rather than the Pantone/Hex code. This is a point that has come up occasionally, including in the Sainsburys v Babybel case [IPKat post here] where the mark consisting of an image of the red coating of the Babybel product was considered insufficiently precise. (Disclaimer: this Kat’s firm acted for Sainsbury’s in that case.) The judge in Babek decided that the case could be distinguished from those where the hue is needed to satisfy the requirement that the mark distinguish a particular trade. This is sensible in preventing an overly technical approach to trade mark registrations.

There are some other interesting points in the case, including the impact of that apparently never-ending issue of Brexit. The judge took a pragmatic view that Brexit did not complicate matters by raising the prospect of the differing requirements to describe what type of mark a mark is could result in different tests being applied.

What does it mean?

A mentor of this Kat once made the comment that a plate of salmon hors d’oeuvres (good arguments) should not be tainted by the presence of a dead mouse (bad ones). That analogy seems apt. Lots of arguments were put forward because none of them were knockouts, making the better ones less appealing. It is a difficult line to tread in practice though; one never wants to leave something in the locker.

Trade mark proprietors and their advisers will be pleased to see a sensible approach being taken to interpreting trade mark registrations. The case does, however, highlight a long-running issue with trade mark descriptions. Often, as in this case, they add very little. Sometimes though, the description conflicts with or casts doubt on the registration, potentially rendering them invalid. This has caught out many a brand, and this Kat thinks that the best approach is often to say as little in the description as is feasibly possible. Interestingly, practice in other jurisdictions often differs, so a joined-up, consultative approach between international advisers is called for.

From a litigation perspective, the claim now proceeds on the basis that the mark is validly registered. There appears to be a dispute as to the right of the additional defendant to grant the licence Iceland relied on. The case highlights the opportunity to take certain issues out of a case at an early stage so as to narrow the issues, and often encourage settlement.

Postscript: For those interested in late night nourishment, and the characteristics of patrons of establishments supplying it, the Morley’s fried chicken case concerning whether average consumers can be intoxicated is being heard in the Court of Appeal on Friday.