Outer House refuses to award damages in £1.1 million chocolate fudge finger trademark dispute

About this case:

• Citation:
  [2026] CSOH 85
• Judgment:
  External link
• Court:
  Court of Session Outer House
• Judge:
  Lord Sandison

Alleging passing off and trademark infringement against a rival manufacturer of Chelsea Whopper confectionery, the pursuers sought inter alia £1.1 million in damages.

The case was heard by Lord Sandison, with Erin Grieve appearing for the pursuers and the defenders appearing in person.

Chelsea Pensioner-branded chocolate fudge fingers

In 1994, a predecessor of the pursuers acquired the recipe to (and goodwill and associated rights in) a confectionery product consisting in cocoa-dusted fudge fingers known as the Chelsea Whopper. Two trademarks associated with the product – one relating to its Chelsea Pensioner-featuring branding and the other relating to its name – were subsequently registered in 2006 and 2019 respectively. Although claiming to have become proprietor of the trademarks in 2020, the pursuers did not effect registration of the transaction until April 2026 – two weeks after the commencement of their action.

In 2006, the pursuers became aware that the defenders’ Troon sweet shop had begun to produce and sell a similarly packaged product bearing the name ‘The Original Chelsea Cocoa Dusted Chocolate Fudge Whoppers’. The defenders claimed to have been producing Chelsea Whoppers since 2002, having been taught how to make them by a figure – unrelated to the pursuers – who had himself been the pupil of Colonel Hunt, the whoppers’ original inventor. They denied being aware of any confusion between the parties’ respective products and confessed to having made only a modest profit of around £12,000 in five years from the confectionery.

After some amendments to previous motions, the pursuers sought a smorgasbord of remedies against the defenders, claiming passing off and trademark infringement. Such remedies included £1.1 million in damages; permanent interdict against sale of the product; delivery up of all the defenders’ products, manufacturing equipment, business records and electronic devices; seizure of all such products from all retailers or distributors; agent and client expenses; and arrestment and inhibition on the dependence.

The motion was made despite the defenders having notified the pursuer of an overhaul to the packaging of their product and subsequently undertaking to refrain from producing or marketing any product bearing the words ‘Chelsea’ or ‘Whopper’. Yet having contrived to purchase one shop’s entire stock of the defender’s whoppers, before discovering a fortnight later that they had been restocked, the pursuers minuted for breach of the defenders’ undertaking; without conclusive evidence of breach, however, and with the lord ordinary failing to regard “contempt proceedings in respect of 37 bars of chocolate fudge as being an appropriate way of using the court’s time and resources”, the minute was dismissed. The pursuers’ substantive averments fell for determination before the Outer House of the Court of Session.

Claims existed ‘in the AI realm only’

Observing some irregularity in the pursuers’ presentation of their case, Lord Sandison noted: “The pursuers at proof fell well short of making out their pleaded case. The hearing was a salutary lesson in how AI may prompt lay persons to say the right things in pleadings, but cannot furnish the evidence needed to establish those statements. The pursuers seemed, further, to be under the misapprehension that any production lodged by them should be regarded, not only as self-proving, but as demonstrating the truth of any matter which it narrated, regardless of the absence of any joint minute of agreement, or of the document being spoken to by anyone at proof. The two trading standards officers called to give evidence were evidently mystified as to why they had been summoned to court. One of them vocalised that puzzlement before giving her evidence. I was equally mystified, both before and after their evidence had been given.”

Turning to the pursuers’ averments of passing off, he continued: “The evidence led entirely failed to establish the existence of any substantive goodwill attaching to the first pursuer’s product. No doubt there are people who like to buy and consume chocolate-flavoured fudge fingers covered in cocoa powder, but nothing was adduced to show that at least some of those people have sought out the first pursuer’s product in preference to others … One would not have thought, if goodwill really existed in relation to the first pursuer’s product, that it would have been difficult to establish that by satisfactory and independent evidence, most obviously by way of retailers explaining their customers’ apparent preferences.”

Rejecting the claim as regards passing off, Lord Sandison added: “Similarly, there was no direct evidence of confusion between the parties’ products on the part of consumers or retailers … I have already indicated that my view of the packaging respectively in use by the parties at the start of the litigation was that the case for confusion was a marginal one. In such a case, an absence of evidence supporting an inference of the likelihood of actual deception may be decisive. I consider that to be the case here. Absent the establishment of goodwill and likely confusion, the pursuers have no proper basis for claiming any relief in respect of the passing off element of their case, and I shall absolve the defenders from the relative conclusions.”

Although accepting the pursuers’ claim of trademark infringement in the context of the parties’ products’ similar names, Lord Sandison added: “[The defenders] are not … entitled to permanent interdict. Given the undertaking offered to and accepted by the court on 1 May 2026, there is no reasonable basis for any apprehension that the previous infringement will continue. They can apply to the court for appropriate relief should objectively satisfactory evidence of any material breach of the undertaking come to light. So far as damages in respect of the established infringement are concerned, I do not consider that it is in accordance with general principles of Scots law to award nominal damages in the absence of proof of loss. Such a case is one of iniuria sine damno, and damnum is an essential feature of any valid claim to damages, and no claim was advanced in respect of any general trouble and inconvenience.”

In that regard, he concluded: “In the present case, although the pursuers in point of form advanced claims in respect of brand dilution and reputational erosion, no relevant evidence was advanced that either of these things had in fact happened or that any particular cost would reasonably be incurred in addressing them if they had … There was some suggestion in the pursuers’ pleadings that the defenders’ pricing policy had been aggressive and had prevented price increases being implemented by the pursuers, but again no actual evidence of any of that was led. All of these claims existed in the AI realm only.”

Declarator of infringement was accordingly granted, with the pursuers’ claims quoad ultra dismissed.