From Stripes to Supermarkets: The Court of Appeal Reaffirms the Need for Precision in Trade Mark Law

On 23 October 2025, Lord Justice Arnold delivered two landmark Court of Appeal decisions addressing trade mark registrability: Thom Browne Inc & Anor v adidas AG [2025] EWCA Civ 1340 and Babek International Limited v Iceland Foods Limited [2025] EWCA Civ 1341.

Both judgements tackled the questions of the registrability of trade marks, focusing on the three essential requirements for validity:

1. The mark must be a ‘sign’;
2. It must be capable of being represented graphically in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner (the Sieckmann criteria); and
3. That sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Both appeals turned on the relationship between the marks’ visual representation and written descriptions which can make all the difference between a valid right and one that unravels under scrutiny.

Babek v Iceland Foods

The dispute centred on Babek’s UK trade mark for described as: “Gold oval with embossed BABEK writing. Colour Claimed: Gold, black.” When Iceland began selling identical products bearing the BABEK mark, Babek sued for infringement. Iceland counterclaimed, arguing that the registration was invalid because the description lacked the clarity and precision required under the 1994 Act and the Sieckmann criteria.
In March 2025, the IPEC upheld the validity of the trade mark, concluding that a typical reader would recognise it as a 2D figurative mark with a 3D appearance, as described, and that precise hues or pantone numbers were not necessary to satisfy the Sieckmann criteria.
Iceland took its case to the Court of Appeal, but the attempt fell short – the Court dismissed the appeal, reaffirming the original ruling. The decision offered some important clarifications for trade mark law:
• Interpreting Descriptions: A trade mark’s written description should be understood in light of its visual representation. Minor inconsistencies or a lack of intricate detail will not automatically render a mark invalid.

• No “Anxious Pedants”: The judgment reaffirmed that examiners and the public are not “anxious pedants” and that a mark can still be clear and precise without exhaustive technical details such as exact Pantone numbers.
• Colour Claims: For figurative marks, general colour descriptions (such as “gold” and “black”) are sufficient; precise shades are only required where the colour itself is the distinctive element of the mark.
• Consistency Between Description and Image: The Court found no inconsistency in describing “embossed” lettering within a 2D image, noting that a reasonable observer would interpret this as a 2D depiction of a 3D effect.

Thom Browne v adidas

Adidas owns the famous “three-stripe” design, used on clothing and footwear and Thom Browne is a luxury fashion brand that uses a “four-bar” stripe design.
Thom Browne challenged the registrability of 16 of Adidas’ “three-stripe” position marks for lack of registrability, distinctive character and genuine use. None of the marks were invalidated for lack of distinctiveness, and the non-use challenge mostly failed. However, 8 marks were invalidated for lack of registrability. Adidas had counter-claimed for infringement and passing off, both of which were dismissed.
Adidas appealed the invalidation of 6 of the 8 position marks which was ultimately dismissed. The Court upheld the High Court’s finding that the 6 UK registrations failed to satisfy the first and second registrability requirements and were therefore invalid.

The Court emphasised that the public must clearly understand what a mark is and the scope of its protection. While some variation may be permissible, such as different typefaces for word marks, the Adidas marks posed a problem because the combination of image and description allowed for too many variations in stripe length and position. This justified the judge’s finding that the marks failed the first two conditions, consistent with prior case law.

Conclusion

Descriptions don’t need to be overly detailed if the pictorial representation is clear. However where a description is required to provide clarity, as is often the case for colour or position marks, a precise and detailed description is essential to satisfy section 1(1) of the Trade Marks Act 1994 and the Sieckmann criteria, thereby avoiding refusal or invalidation for multitude of forms.

This article was prepared by Trainee Trade Mark Attorney Laura Evans