Storm in a teashop

By Brand Heeler

Another food-related blog entry – this time, much do about nothing concerning muffins

Another day, another food brand spat: just as we were finishing off a delicious bowl of pho (actually, it included some non-standard ingredients, so it was only a faux pho), news came in of a similar bust up over cakes. Bea’s of Bloomsbury has made a name for itself selling doughnut-shaped muffins called ‘Duffins’. They aren’t the first to do this, but they do seem to be the best, due no doubt to the irresistible combination of raspberry jam, buttermilk and nutmeg in each neologised confection.

But what’s this? Starbucks have just launched a new cake which combines ‘the best of a muffin’ with ‘elements of a traditional jam-filled doughnut’ and which, by amazing coincidence, is filled with raspberry jam and boasts ‘just a hint of nutmeg’ on a buttermilk base. To top it off, they’ve decided to call it the [drum roll…] ’Duffin’! And, to rub nutmeg flavoured salt into the wound, Starbucks’ Duffin supplier, Rich Products Corp, has registered DUFFIN as a UK trade mark and is applying for a EU Trade Mark.

Starbucks claims to have known nothing about Bea’s Duffins before it launched its own. It also claims to have ‘conducted an extensive search online and a full trademark search’ which turned up ‘no indication that anyone else was using the name, nor retailing a similar product’. Hmmm… something about those claims doesn’t quite ring true. Currently the internet is awash with stories about this very story, so it’s hard to know what a search for DUFFIN might previously have revealed. But Bea herself reckons that a cursory check on Google would have thrown up numerous references to her product and business, so it sounds like someone skimped on their research. Or maybe big businesses don’t bother themselves with other people’s prior rights.

Bea meanwhile is clearly (and rightly) concerned. In theory, she could be on the receiving end of a cease-and-desist letter any day now and even if she wins, she would be put to a lot of time, trouble and expense first. Starbucks has magnanimously said it won’t try to use the trade mark to stop Bea selling Duffins, which is possibly a shrewd PR move but makes lousy legal sense. What’s the point of acquiring a legal right if you’re not intending to enforce it? And if you’re inconsistent in your enforcement, you risk infringers calling your bluff, you risk having wasted your money, you risk brand confusion, and (ultimately) you risk losing that legal right as your brand becomes generic.

Much like our previous article about Pho Holdings doing a swift about-turn over their soup, this has all the hallmarks of a quick corporate rethink in the light of adverse public opinion. And as with PHO®, Bea’s of Bloomsbury or some other Duffin baker will have to choose to spend the time and money to mount a formal challenge before Rich Products’ trade mark can be conclusively knocked out. Some of this is simply the price of doing business – stuff happens and it costs money to deal with it. Some of it is a cautionary tale: it only costs a few hundred pounds to register a trade mark, but a few tens of thousands to contest one.

We reckon it might all blow over once everyone’s had their fair share of publicity. At which point we can console ourselves that it was all much ado about duffins.

This article contains our thoughts and opinions on an issue of general interest and is written from the perspective of Australian and/or English law. It is not legal advice and is not provided in the context of a solicitor-client relationship. It may not even be relevant to your jurisdiction. No duty of care is assumed or accepted. Please carry out appropriate research and consult with a suitably qualified legal expert before taking any action or making any decisions.

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