When is a muffin, not a muffin?

October 10, 2013



When it is trade marked as a Duffin ®.

Hats off to business woman Bea Vo, owner and proprietor of Bea’s of Bloomsbury who had the imagination to cross a doughnut and a muffin to create a duffin. The idea wasn’t entirely her creation. Apparently the domestic Goddess Nigella Lawson did a recipe for jam doughnut muffin combos a few years ago. However, Bea with her creative flair made the duffin hers by the addition of raspberry jam, nutmeg and buttermilk. This juicy moist delicacy was one of many luxury creations sold in her popular and upmarket bakery in London. That was all well and good until Starbucks cake supplier Rich Products Limited came along and registered the name Duffin ® in class 30 (a food products category) for guess what? Yes you’ve guessed it – a product that is remarkably similar to Bea’s duffin cakes. In fact Rich Products have filed for a Community Trade Mark for a whole range of pastries and goodies. However, having already been granted a UK trade mark in class 30 for the Duffin®, Rich Products wrote to Bea and asked her to stop using THEIR name!

As you can imagine, Rich Products say that they DID undertake clearance search exercises and didn’t find any problems with the brand. Bea says they can’t have looked very far as her very popular duffins are available on line and a Google search should have brought them up. However, she had not registered the unique product as a trade mark. The short point is this. Registering a trade mark IS the surest way of protecting key brands. In certain businesses such as consumer goods, food and clothing, getting your brands registered is fundamental, and it is VITAL to do full clearance searches. This entails a lot more than doing identical word searches, and trawling the internet. Whilst it is clear that Bea has prior rights and that Rich Products can’t stop her, they can stop her from applying the duffin name to other bakery products.

A professional clearance search will look at not just the same words, it will also “landscape” around the mark to find potential phonetic conflicts and marks which are similar but not identical. This exercise allows you to limit the risks you face when filing or launching a product or service.

So what is the downside of filing a mark without a clearance search or against the advice of a clearance search? Well problems often arise from other trade mark owners who will object to your registration. It could result in costly and protracted trade mark opposition results, or in certain cases meaning that you get sued for trade mark infringement. In virtually all cases you will lose your filing fee. If this is a Community Trade Mark, then you will be down over £800 and unless you really want the mark, it often isn’t worth the risk.

Need a trade mark filing? Come and discuss it with Liz, Kim, Dan, Kate or Kirsten at the Sunshine Bakery. The tea and cupcakes are on us! Call 0844 800 8871 or email us dan@virtuosolegal.com.