Figurative Trade Marks: Where the Picture and Description Align, the Image Defines the Sign — Independence of the Sieckmann Conditions Reaffirmed

Introduction

In Babek International Ltd v Iceland Foods Ltd [2025] EWCA Civ 1341, the Court of Appeal (Civil Division) delivered an important judgment on the registrability and interpretation of figurative trade marks featuring both a pictorial representation and a written description under the pre-2017 “graphical representation” regime. The appeal arose from Iceland’s counterclaim for invalidity of Babek’s UK comparable trade mark (originally an EU registration effective from 16 January 2009) in Classes 29 and 42, depicting a gold oval device with the word BABEK presented with an “embossed” effect, accompanied by a written colour claim (“Gold, black”) and a brief description (“Gold Oval with Embossed BABEK writing”).

The Intellectual Property Enterprise Court (IPEC) had rejected Iceland’s invalidity challenge. Iceland appealed, arguing that the mark failed two cumulative registrability conditions derived from EU law: (i) that the subject matter be “a sign,” and (ii) that the sign be capable of graphic representation with the requisite clarity and precision (the Sieckmann criteria). The Court of Appeal dismissed the appeal, but in doing so corrected key points of law and clarified the proper approach to the relationship between pictorial representations and written descriptions, the role of categorisation (e.g., “figurative mark”), and the need (or not) for precise colour specifications (e.g., Pantone references) for figurative device marks.

Summary of the Judgment

The Court of Appeal dismissed Iceland’s appeal and upheld the validity of Babek’s mark.
Crucially, it held that the first (sign) and second (clarity/precision) registrability conditions are independent and must not be collapsed into any “capacity to distinguish” assessment. The IPEC judge’s reliance on that test (previously articulated in Sainsbury) was an error of law.
Where an application contains a pictorial representation and a written description that are consistent, the subject matter is a single sign defined by the image; the description merely clarifies and does not expand the scope or introduce alternative variants.
The mark here is a figurative 2D sign. The word “embossed” in the description would be understood by the reasonable reader as a visual effect (shading and highlights), not as a 3D shape claim.
No Pantone or equivalent precision was necessary on these facts: the pictorial representation itself defines the sign; the colour words (“gold, black”) are read as a concise aid to understanding and compliance with the Implementing Regulation’s requirement to indicate colours in words.
There is no implied tolerance for “minor variations in hue”: the mark is the image as depicted. The Court expressly disagreed with the IPEC judge on that point.
“State of the register” evidence (e.g., other marks on the register) is irrelevant to validity and should not be relied on.

Analysis

1) Precedents Cited and Their Influence

The Court set the legal framework through a carefully curated line of CJEU and domestic authority under the pre-2017 Directive/Regulation regime:

Sieckmann (C-273/00): Established that non-visual signs can be trade marks if graphically representable and introduced the clarity-precision requirements (the “Sieckmann criteria”: clear, precise, self-contained, easily accessible, intelligible, durable, objective). This case anchors the second condition and underpins the Court’s insistence on conceptual clarity about the protected sign.
Libertel (C-104/01) and Heidelberger Bauchemie (C-49/02): Confirmed that single colours and abstract colour combinations can be signs, but warned against claims that allow “every conceivable form” or lack a systematic arrangement. These cases illustrate how descriptions that embrace multiple possible manifestations undermine both the first and second conditions. The Court uses them to emphasize that multiplicity or indeterminacy is fatal.
Dyson (C-321/03): Rejected an attempt to register the “transparent collecting bin” in abstract terms covering “all conceivable shapes,” holding that such a claim is a mere product property, not a specific sign (first condition failure). This is the extreme cautionary tale against non-specific subject matter.
Shield Mark (C-283/01): Clarified representational standards for sound marks (e.g., musical notation is permissible; onomatopoeia or vague verbal descriptions are not), reinforcing the need for objective, uniform representation.
Hartwall (C-578/17): Held that an inconsistency between the sign as depicted and the claimed classification (e.g., figurative drawing vs. asserted colour per se) can defeat registration for lack of clarity/precision. The Court relies on Hartwall to say categorisation is not determinative, but inconsistency between categorisation, picture, and description is fatal.
Red Bull v EUIPO (C-124/18 P): Upheld invalidity where the description and representation permitted a plurality of reproductions not determined in advance or uniform. The Court uses Red Bull to underscore that a registration must not accommodate multiple undelimited versions of the sign.
Spear v Zynga [2013] EWCA Civ 1175 and Nestlé v Cadbury [2013] EWCA Civ 1174: Domestic authorities directly applied to the first and second conditions. In Spear, a tile mark encompassing innumerable letter-number permutations failed as an attempt to monopolise a property rather than a single sign. In Nestlé, a colour description (“predominant” purple on packaging) wrapped up an “unknown number of signs,” failing both conditions. These cases were pivotal for rejecting any conflation of “capacity to distinguish” with the threshold questions of “what is the sign?” and “is it clearly/precisely represented?”
Glaxo v Sandoz [2017] EWCA Civ 335: Reaffirmed that graphic representation comprises both picture and description and must be read together. It also emphasised the fairness rationale for clarity/precision so that authorities and competitors can meaningfully perform identity/similarity assessments. The Court here adopts Glaxo’s approach and strengthens it in application to figurative marks with colours.
Robert McBride [2003] RPC 19 and Calor Gas (O/340/06): Appointed Person decisions stressing precision in colour specification where colour is integral. The Court recognises these are instructive but does not impose a Pantone requirement across the board; the outcome depends on whether the mark is a colour per se versus a specific figurative sign defined by its image.
Sainsbury v Fromageries Bel [2020] RPC 3: Hacon HHJ’s “capacity to distinguish” test for when hue precision is needed is respectfully disapproved. The Court of Appeal confirms that test is wrong in law; the first and second conditions are separate from distinctiveness.
British Sugar v James Robertson [1996] RPC 281: “State-of-the-register” evidence is generally irrelevant to validity. The Court applies this orthodoxy and criticises reliance on examples of other registrations.

Taken together, the authorities pushed the Court towards a disciplined, sign-focused, clarity-centric reading: identify one sign, ensure consistency between picture, description and categorisation, and avoid any indeterminacy or plurality of possible reproductions.

2) The Court’s Legal Reasoning

a) Independence of the Conditions: correcting the legal test

The Court emphatically reaffirms that the three conditions for registrability — (1) existence of a sign, (2) clear and precise graphical representation, and (3) capacity to distinguish — are independent and cumulative. It was an error for the IPEC to resort to a “capacity to distinguish” proxy to decide questions that belong to (1) and (2). This is significant doctrinal housekeeping: courts and registries must first identify the sign and ensure its representation is clear, before they ask whether that sign is capable of distinguishing.

b) Interpreting the application “as a whole,” with no element taking precedence

It was common ground, and accepted by the Court, that when both a pictorial representation and a written description are supplied, and a categorisation is indicated (e.g., “figurative mark”), none of these elements has formal precedence. They must be read together through the lens of the “reasonable reader.” However, following Hartwall and Glaxo, any inconsistency between them can be fatal because it prevents identification of the exact subject matter and scope of protection.

c) Applying the approach to Babek’s mark

Figurative categorisation and the picture aligned: The image shows a coloured logo — quintessentially figurative. Nothing in the description contradicts that categorisation.
Meaning of “embossed” in context: Although “embossed” could denote a 3D relief, a reasonable reader would understand it here as referring to a 2D visual effect created by shading and highlights on the letters and surrounding elements. Thus, there is no attempt to claim a 3D shape; the mark remains a 2D figurative device.
Role of the colour words and description: The indication “gold, black” and the short verbal description are read as concise aids to clarify what is already visible and as compliance with the Implementing Regulation’s requirement to name colours. They do not expand the sign beyond the image or invite “every conceivable form” scenarios.
No implied “hue variation” allowance: Importantly, the Court rejects the IPEC’s suggestion that the sign is the image “subject to minor variations in hue.” No such latitude was claimed or supported by the description. The sign is the image, full stop.
Pantone not mandated here: Because the image itself defines the single sign and the description is consistent with it, the absence of Pantone codes does not undermine clarity or precision in this figurative context. Pantone-type precision remains relevant in colour per se cases or where the colour element is the essential characteristic whose exact hue delineates the sign; but not every figurative device mark must specify Pantone references to be valid.

d) Consequences for the first and second conditions

First condition (sign): The registration comprises one sign — the specific depicted device — not a class of possible variants. It is not a “mere property” claim nor a multiplicity of signs wrapped into one description.
Second condition (clarity/precision): The sign is clearly and precisely determined by the image, read with the concise, consistent description. There is no inconsistency (cf. Hartwall) and no plurality of undelimited reproductions (cf. Red Bull).

e) Procedural and evidential guardrails

The Court underscores that “state-of-the-register” evidence is generally irrelevant to validity assessments; citing other registrations neither binds nor guides the determination of what the instant sign is or whether it meets Sieckmann.
The assessment is fixed at the registration date (s.47(1) TMA). For “comparable UK marks” derived from EUTMs, the original application context matters, even if the UK Register later omits a categorisation label.

3) Impact and Practical Implications

a) For filing and prosecution strategy

Let the picture do the heavy lifting (when it can): For figurative device marks, a high-quality image can define the sign. A succinct, consistent description that names colours and briefly characterises key visual effects may suffice.
Avoid expansive or indeterminate language: Do not use terms that imply multiple embodiments (“in every conceivable form,” “predominant colour,” “applied in equal proportion” without fixed arrangement) unless you are pursuing a colour per se or pattern mark and can satisfy Heidelberger/Red Bull.
Pantone: useful, not universal: Precise hue references are advisable where colour is the sign’s essential characteristic (colour per se marks) or where the device’s distinctiveness hinges on a particular hue. But where the image itself is the sign, Pantone may not be necessary — provided the picture and description are consistent and unambiguous.
Choose categorisation carefully and avoid inconsistency: If you select “figurative,” ensure the representation and wording don’t suggest a colour per se or shape claim. Hartwall shows that internal inconsistency can defeat registration.

b) For examination and registry practice

Apply the “reasonable reader” approach: Registries should read picture, description, and categorisation together. If consistent, do not require hue precision as a matter of course for figurative marks.
Police against multiplicity and ambiguity: Where the description suggests a category of variants, or undermines the determinacy of the image, raise clarity/precision objections grounded in Sieckmann, Heidelberger, Red Bull, and Glaxo.

c) For enforcement and contentious matters

Identity is exacting: Because the sign is the depicted image and no hue tolerance is implied, strict “identity” comparisons (LTJ Diffusion) may favour alleged infringers unless the reproduction is truly identical. Similarity and likelihood of confusion remain available for closer cases.
Invalidity attacks must target inconsistency or multiplicity: Absent inconsistency between the components of the registration or an overbroad description, attacks on clarity/precision will struggle where the image clearly fixes the sign.

4) Complex Concepts Simplified

First condition (Is it “a sign”?) The mark must denote one specific thing, not a moving target. If a description covers endless possible forms, it fails.
Second condition (Clarity and precision — the Sieckmann criteria) The register must enable anyone to know exactly what the sign is. The image and words must point to the same, self-contained sign.
Third condition (Capacity to distinguish) This is a separate question. Do not use “distinctiveness” (inherent or acquired) as a shortcut to answer the first two questions.
Figurative vs colour per se A figurative mark protects the depicted device as a device. A colour per se mark protects a colour or combination abstracted from specific shapes — and faces stricter precision demands.
Inconsistency (Hartwall) If the picture, description, and categorisation pull in different directions, registration fails for lack of precision.
Plurality of reproductions (Red Bull) If the registration allows multiple undelimited versions, it is invalid.
State-of-register irrelevance Other registrations are not evidence that yours is valid; each application stands or falls on its own clarity and determinacy.

Key Takeaways

The first and second registrability conditions are independent of distinctiveness; “capacity to distinguish” is not the legal test for whether a mark is a sign or is clearly represented.
For a figurative mark with a consistent image and description, the protected sign is the image; the description clarifies but does not enlarge or create variants.
There is no implied allowance for “minor variations in hue” unless clearly claimed. Identity analysis will be stringent.
Pantone specification is not mandatory for every figurative device; it depends on whether colour as such defines the sign’s essence.
Avoid internal inconsistencies (classification vs representation vs description). Consistency is paramount.

Conclusion

Babek v Iceland is a clarifying, practitioner-focused decision that restores doctrinal discipline to trade mark registrability analysis under the legacy graphical representation regime. The Court of Appeal firmly separates the threshold questions — “what is the sign?” and “is it clearly and precisely represented?” — from any inquiry into distinctiveness, and it refines how courts should read a pictorial representation together with an optional description and categorisation. Where these components are consistent, the image defines the sign; the description is explanatory, not expansive; and precise colour coding is not demanded for figurative devices unless the essence of the sign requires it.

The decision will streamline prosecution and litigation for figurative marks, reducing unnecessary disputes about Pantone references where the image itself provides determinacy, while simultaneously warning applicants against indeterminate or inconsistent presentation. It also narrows any temptation to imply flexibility in hue, thereby preserving fairness and legal certainty in identity and similarity assessments. In short: when the picture and words align, the picture rules.