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Trademarks in the bakery: let the batter begin!

We have become a nation obsessed by cake. Cake is not, as we once thought, a treat reserved for birthdays and special occasions. You can barely order a cup of coffee without having your arm twisted into buying some form of patisserie.

Cupcake stores, tea houses and dare I say it ‘bakers’ are popping up on high streets everywhere and you only need to switch on the television to see Mary Berry and her grumpy sidekick talking about “soggy bottoms” and “even crumb texture”. Don’t let me get started on “buttery biscuit bases”!

After all of this it is likely that you will be suffering cake fatigue, (or it may just be the result of a horrible post-cake sugar comedown). Victoria Sponge? Boring. Lemon Drizzle? No thanks. You are looking for something innovative, new and exciting. It should be like a cake, but not a cake. Maybe more like a muffin and maybe just a little bit like a doughnut, hang on…what if we made a doughnut that was also a muffin?

It was probably a similar conversation that occurred in the Starbucks Baked Goods Product Development brainstorming session shortly before the conception of the ‘Duffin’. Half doughnut, half muffin, the birth of the Duffin was a happy time for all, not least for the factory suppliers to Starbucks (Rich Products) who skipped straight down to the Intellectual Property Office and registered “Duffin” as a trademark.

A glorious new cake-come-fried dough concoction had been created and everyone was patting Starbucks on the back for being so great and making our wildest cake fantasies a reality. Everyone except for Bea, owner of the boutique tea house “Bea’s of Bloomsbury”, who took to the social media platform Twitter to start #DuffinGate and make her feelings known about Starbucks’ latest creation. It turns out, that Starbucks was pretty late to the ‘doughnut masquerading as a muffin’ party. So late that it had totally missed the fact that Bea had been baking and selling Duffins for years, the recipe for which sat in her widely-sold ‘Tea with Bea’ recipe book published in 2011.

Bea is naturally concerned for the future of her Duffins. Will Starbucks assert its right to prevent her from selling them? Must she cease and desist from selling Duffins? Starbucks has responded by way of a public statement and said that it won’t stop Bea from selling her wares, however it seems that Bea is on the lookout for a trademark lawyer to help her fight Starbucks on this. Whether this is just “Duff talk” on Bea’s part or she actually plans to pursue Starbucks remains to be seen.

Registered trademarks can be challenged and if the opposition is successful, the  registration may be cancelled. Bea does, to some extent, have the common law on her side. Even without a registered trademark the owner of goodwill in an unregistered mark can sue for “passing off”.

Watch this space, it could get messy!

Simon Halberstam

For further information, contact Simon Halberstam, partner in our technology law department at [email protected] or by phone on 020 3206 2781