Introduction

This case concerns a trade mark opposition filed by Scrummy Tummies Ltd (the “opponent”) against an application by That’s Scrummy Ltd (the “applicant”) to register the mark “That’s Scrummy” in Class 16 for various printed materials, including books, recipe binders, stationery, and educational publications.

The opponent relied on its earlier registered mark, “Scrummy Tummies” (UK Reg. No. 3719009), which covers goods in Classes 8, 16, 21, and 41, including printed training materials, planners, and diaries in class 16 and training and education services in class 41; which together formed the basis of the opposition.

The opposition was based on multiple grounds under the Trade Marks Act 1994, including:

• Section 5(2)(b) – Likelihood of confusion due to similarity between the marks and overlapping goods;
• Section 5(3) – Reputation of the earlier mark, with claims that the applicant’s use would take unfair advantage or be detrimental; and
• Section 5(4)(a) – Passing off, alleging the applicant’s mark would mislead consumers and harm the opponent’s goodwill.

Both parties submitted evidence (parts of which were irrelevant to the issues at hand), and neither requested an oral hearing. The case was decided solely based on written submissions.

The Decision

Section 5(2)(b) – Likelihood of Confusion

The Tribunal first assessed whether the applicant’s mark, "That’s Scrummy", was similar enough to the opponent’s mark, "Scrummy Tummies", to create a likelihood of confusion among consumers. In terms of the goods and services, some of the applicant’s products, such as printed materials including books, stationery, and educational materials, overlapped to various degrees with the opponent’s goods, including training manuals and planners. These were considered identical or similar by the Hearing Officer. However, items such as recipe books, cardboard boxes, and baby memory books were deemed dissimilar, thereby reducing the likelihood of confusion for those goods.

When comparing the marks, the Tribunal found a medium degree of visual similarity, as both marks contained the word "Scrummy." However, the applicant’s mark began with “That’s”, while the opponent’s included “Tummies”, creating a clear distinction. A medium level of aural similarity was also found, given that both marks shared the common "Scrummy" element, although their overall pronunciation differed. Conceptually, "That’s Scrummy" formed a unitary phrase meaning "this food is delicious," while "Scrummy Tummies" suggested tasty food in connection with a stomach. This distinction resulted in only a medium level of conceptual similarity, as determined by the Hearing Officer.

Regarding the distinctiveness of the opponent’s mark, the tribunal ruled that "Scrummy Tummies" had only a medium level of inherent distinctiveness and rejected claims that it had acquired enhanced distinctiveness through use. The opponent failed to provide compelling evidence of widespread consumer recognition that could support such a claim.

Ultimately, the Tribunal concluded that there was no likelihood of confusion. Consumers were unlikely to mistake one mark for the other due to their distinct structures and meanings, ruling out direct confusion. Additionally, the Tribunal found no indication that consumers would assume a commercial link between the marks or believe them to be related sub-brands or extensions of the same company, thereby dismissing the possibility of indirect confusion.

As a result, the opposition under Section 5(2)(b) was dismissed.

Section 5(3) – Reputation & Unfair Advantage

The opponent argued that its mark enjoyed a reputation and that the applicant’s use of "That’s Scrummy" would unfairly benefit from or damage that reputation. To support this claim, the opponent relied on its social media presence, highlighting a significant number of Instagram followers. However, the Tribunal found no reliable evidence of sales figures, market presence, or consumer recognition that would establish a significant reputation in the UK. Even if there was some level of consumer awareness, there was no strong evidence to suggest that consumers would mentally associate "That’s Scrummy" with "Scrummy Tummies" in a way that would be detrimental to the opponent’s brand or allow the applicant to unfairly benefit from its reputation. As a result, the opposition under Section 5(3) failed due to a lack of sufficient evidence to support the opponent’s claim.

Section 5(4)(a) – Passing Off

To succeed in a passing off claim, the opponent needed to prove three key elements: goodwill, misrepresentation, and damage. This required demonstrating that "Scrummy Tummies" had a reputation and consumer recognition, that the applicant’s use of "That’s Scrummy" would mislead consumers into believing there was a connection between the two brands, and that this misrepresentation would result in commercial harm to the opponent.

The Tribunal found no substantial proof of goodwill in the opponent’s brand, as there was little evidence of actual market presence or sales. Without clear evidence of established goodwill, the foundation of the passing off claim was significantly weakened. Furthermore, the Tribunal ruled that the differences between the marks were too significant for consumers to mistakenly believe they were related, meaning there was no misrepresentation. Finally, as the opponent failed to provide evidence of lost sales or customer confusion, the tribunal concluded that there was no economic harm suffered by the opponent.

The opposition under Section 5(4)(a) was also rejected.

Conclusion

The opposition was unsuccessful across all grounds, and the applicant was entitled to a small cost award.  

The Tribunal concluded that there was no likelihood of confusion. "That’s Scrummy" was not similar enough to "Scrummy Tummies". They also found no significant evidence of reputation to support an unfair advantage/detriment claim, and no misrepresentation leading to passing off. As a result, the applicant’s trade mark "That’s Scrummy" was allowed to proceed to registration. 

This decision serves as a reminder of the importance of providing the Tribunal with good quality evidence when attempting to demonstrate reputation in section 5(3) claims and goodwill in section 5(4)(a) claims. It also reinforces the legal requirement in section 5(3) claims that opponents show that any mental link between the two marks in issue causes/will cause actual detriment to the earlier mark.

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