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Pastry Plagiarism #Duffingate

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You’re at Starbucks, order a delicious latte and the barista asks if they could tempt you with a sweet treat; what do you go for? The caramel shortbread, rocky road or maybe you go for their all new doughnut-muffin hybrid – a Duffin? Or have you already tried one at Bea’s of Bloomsbury?

Bea’s of Bloomsbury is a chain of boutique tearooms in London that have been baking and selling Duffins since 2009 and have even published the recipe in their ‘Tea with Bea’ recipe book. It appears that Starbucks’ all new Duffin is not so new after all!

Starbucks have not only started selling Duffins but their factory supplier, Rich Products, have gone one step further by registering a trade mark for the name ‘Duffin’ in the UK and have applied for registration at European level. The Duffin is now the subject of a social media storm dubbed #Duffingate and a potential challenge of the registered trade mark of the word ‘Duffin’.

What is a trade mark?

For many businesses, intellectual property is a valuable asset that can, if protected correctly, develop and protect market share as well as restrict competition.

A trade mark is a sign which can distinguish goods and services from those of competitors and is often referred to as the ‘brand’ of the business. A trade mark can be, for example, words (Kodak for cameras), slogans (Just do it for Nike), or even numerals (501 for Levis jeans).

A registered trade mark gives the proprietor the exclusive use of the mark in connection with the goods or services for which it is registered. The right can last forever but needs to be renewed every 10 years. This in turn gives the proprietor the right to sue for trade mark infringement if any person uses an identical or similar mark in connection with identical or similar goods without authorisation and where the use has caused or is likely to cause confusion.

Generic terms such as muffin or doughnut cannot be protected as trade marks. The idea of a jam doughnut muffin has been around for many years however can it be argued that the word Duffin is a common word for this hybrid and therefore should not be a registered trade mark?

Starbucks versus Bea’s of Bloomsbury

Starbucks have made a public statement and said that it will not stop Bea’s of Bloomsbury from selling their Duffins, even though they have secured a registered trade mark for the word. It remains to be seen whether Bea’s of Bloomsbury will pursue Starbucks on their registration of Duffin as a trade mark.

Intellectual property, like all property, can be leased, licensed or sold. Both parties may therefore formally agree for Bea’s of Bloomsbury to use the word ‘Duffin’ by entering into a licence. However, if Bea’s of Bloomsbury does decide to challenge the registered trade mark, and is successful, the registration may be cancelled.

Bea’s of Bloomsbury may have a claim under the common law principle of passing off if the following conditions of goodwill, misrepresentation and damage can be established:

  • The term ‘Duffin’ must have been used for a substantial period of time to sell the doughnut-muffin hybrid and thereby created goodwill in the market;
  • The passing off must involve a misrepresentation by Starbucks. In other words, the public must be under the impression that the Duffins originate from Bea’s of Bloomsbury. It is important to note that the intention to misrepresent is irrelevant;
  • The passing off must be likely to cause damage to Bea’s of Bloomsbury reputation and goodwill, resulting in actual or reasonably foreseeable damage.

With the abundant supply of goods and services on the market, #Duffingate provides a useful reminder to businesses of the importance of protecting intellectual property to maintain a competitive edge.
Let the ‘batter’ begin!

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