The Court of Appeal has provided welcome clarity on how trade marks that combine pictorial representations with written descriptions should be interpreted. In Babek International Ltd v Iceland Foods Ltd [2025] EWCA Civ 1341, the Court upheld the validity of Babek's logo mark with the description "Gold Oval with Embossed BABEK writing", rejecting Iceland Foods' argument that the registration was too imprecise to qualify for protection.

The judgment, handed down on 23 October 2025 by Lord Justice Arnold (with whom Lords Justices Newey and Zacaroli agreed), revisits fundamental principles of registrability, particularly the relationship between the visual representation of a mark and its accompanying written description. The judgement also offers practical reassurance for brand owners whose historic registrations predate the shift away from strict "graphical representation" requirements.

Background to the dispute

The dispute concerned a UK trade mark registered in 2009 (a comparable right converted from an EU registration post-Brexit) for goods and services in Classes 29 and 42. The mark comprised a pictorial representation of a gold oval containing the word BABEK in a stylised font to give the appearance of having been embossed, as shown below. When filed, the applicant had included a description of the mark on the application form that it was a "figurative" mark comprising a gold oval with embossed BABEK writing in gold and black. 

Iceland Foods sought a declaration of invalidity, arguing that the registration failed to meet the legal requirements for registrability, particularly the need for clarity and precision in the identification of the sign, and that the combination of the pictorial representation and the written description was inconsistent and imprecise.

Although the case was technically framed as an application for summary judgment, the parties agreed that the issue of validity could be determined in full. His Honour Judge Hacon, sitting in the Intellectual Property Enterprise Court, rejected Iceland's challenge. Iceland appealed.

Legal Framework

The Court reviewed the applicable law as at the date of registration, namely the Trade Marks Act 1994 (implementing Directive 2008/95/EC) and the corresponding EU Regulation. Both UK and EU law were relevant as the details in the original EU trade mark application were at issue. The key requirements for registrability at the time, as established by the CJEU and domestic authorities, are that the subject matter must: (1) be a sign; (2) be capable of graphical representation; and (3) be capable of distinguishing the goods or services of one undertaking from those of another. These conditions are independent and cumulative. The subsequent changes to the graphic representation requirements came into force on 14 January 2019 when the UK implemented the Trade Mark Directive (EU 2015/2436) (the Directive).

The Court examined leading authorities, including Sieckmann [i], Libertel [ii], Heidelberger Bauchemie [iii], Dyson [iv], J.W. Spear & Son v Zynga [v], and Nestlé v Cadbury [vi], which collectively establish that a trade mark must be a single, clearly defined sign, and that its graphical representation (including both pictorial and written elements) must be clear, precise, self-contained, easily accessible, intelligible, durable, and objective. 

In this case, the "graphical representation" requirement is assessed at the time of registration, i.e., as at 16 January 2009. That means the pre‑amendment law applied, under which a trade mark had to be capable of graphical representation. The later reform implementing the Directive (which removed that requirement) is not retroactive and does not affect the analysis here. The mark's status as a comparable UK right post‑Brexit does not change that timing point.

The Appeal

Before the Court of Appeal, Iceland advanced six grounds of appeal, the main thrust of which was that the judge had applied the wrong legal test and had misinterpreted the relationship between the pictorial representation, the written description, and the mark's categorisation as "figurative."  Iceland also argued that the absence of Pantone references and the use of general colour terms ("gold" and "black") rendered the registration imprecise, and that the written description and pictorial representation were inconsistent with the established Sieckmann requirements.

Babek, by contrast, maintained that the mark was clearly a single figurative sign, and that any reasonable observer would understand the description as a shorthand reference to the colours and embossed visual effect visible in the image.

Whilst the Court accepted that the judge had erred in applying the "capacity to distinguish" test, this did not affect the outcome. The Court of Appeal reaffirmed that the three conditions for registrability must be considered independently, and that the assessment of whether a mark is a sign and is clearly and precisely represented must occur before the question of distinctiveness.

The Court's reasoning

Lord Justice Arnold gave the leading judgment. He began by setting out the familiar three cumulative conditions for registrability: (1) the subject matter must be a sign, (2) it must be capable of graphic representation as under the requirements at 16 January 2009, and (3) it must be capable of distinguishing the goods or services of one undertaking from those of another. Each condition is separate and must be met independently.

Arnold LJ found that Judge Hacon had erred in principle by applying a "capacity to distinguish" test when considering the need for colour precision—a test the Court of Appeal had rejected in earlier cases such as J.W. Spear v Zynga and Nestlé SA v Cadbury. Nonetheless, that error did not affect the outcome because, when correctly analysed, Babek's mark satisfied the first two conditions for registrability.

On interpretation, the Court agreed that the starting point was the applicant's own categorisation of the mark as a figurative sign. That classification was not determinative, but it helped frame the inquiry. The Court emphasised that the reasonable reader of the register—whether an examiner, competitor or consumer—would see the registration as a single two-dimensional image depicting a gold oval device with embossed lettering. The written description merely summarised what was visible; it did not create any inconsistency or extend the scope of the registration.

In reaching this view, Arnold LJ drew on the European Court of Justice's decisions in Hartwall [vii] and Red Bull [viii], which both establish that inconsistency between an image and a verbal description can render a mark invalid. Here, however, there was no such inconsistency. The description "gold oval with embossed BABEK writing" was not attempting to define a broad category of signs, but to describe a specific device mark.

The Court also rejected Iceland's argument that the lack of Pantone references rendered the colours uncertain. Arnold LJ observed that the mark was a pictorial logo, not a colour per se mark, and that the visual depiction itself defined the relevant hues with sufficient clarity. The reference to "gold" and "black" was simply a concise verbal indication of the tones used in the image. To require precise Pantone numbers for every shade within the depicted gradient would, he noted, make the trade mark system unworkable.

Lord Justice Zacaroli, concurring, agreed that a reasonable applicant could not be expected to produce an exhaustive textual description of every tonal variation shown in an image. A concise description was sufficient where the picture itself clearly defined the sign.

Outcome and significance

The Court of Appeal therefore dismissed Iceland's appeal and confirmed that Babek's registration remains valid. The decision reinforces several key principles:

• When a trade mark registration includes both a pictorial representation and a written description, they must be read together to determine the subject matter of protection. Neither element takes precedence, and the question is how a reasonable reader would interpret the combination;
• For figurative marks, the standard of clarity and precision is practical: the visual representation can define the sign with sufficient certainty, and exhaustive technical references (such as Pantone codes) are not required unless the colour itself is the subject of protection;
• The law does not require pedantic or exhaustive descriptions of every visual detail; a concise description that aligns with the image is sufficient;
• For a straightforward figurative logo, it is generally safer to file without a description so as not to introduce inconsistency or ambiguity;
• If a description is required, keep it minimal, aligned tightly to the image, and avoid language that suggests a broader category of signs or multiple variants;
• If colour is claimed, indicating the colours in words is acceptable. Specifying a colour code is optional and only helpful if needed to achieve clarity in context; and,
• The test is not how a perfectionist might interpret the registration, but how a sensible and informed reader would do so.

Practical Implications

The judgment provides a welcome measure of certainty for owners of older marks that include colour references but were filed before the more recent guidance on clarity of graphical representation. Many pre-2017 EU and UK registrations include descriptions similar to Babek's, and this decision indicates that courts will interpret them generously, provided the visual image and the wording clearly refer to the same single sign.

It also offers useful guidance for current applicants. While precision is vital, it is equally important that the description and image align. Descriptions should clarify the depiction, not contradict or expand upon it. Inconsistent wording or attempts to claim "every conceivable form" of a colour combination remain fatal.

Finally, the case continues Lord Justice Arnold's careful refinement of the Sieckmann principles for modern practice. The Court's focus on the "reasonable reader" test provides a pragmatic balance between legal certainty and the realities of brand presentation.

For practitioners, the message is clear: when preparing new applications, ensure that the written description and representation work hand-in-hand to identify a single, coherent sign—but do not fear that older, straightforward figurative marks will be struck down merely for lack of Pantone references or exhaustive detail.

Citation: Babek International Ltd v Iceland Foods Ltd [2025] EWCA Civ 1341 (Arnold LJ, Newey LJ, Zacaroli LJ, 23 October 2025)