As a lover of all things food-related, I was surprised this week to hear of a tasty baked good that hadn’t yet made it onto my radar – and a tasty baked good that has come to the world’s attention as the subject of an IP dispute, no less! What more could a girl ask for? Readers will probably already be aware of the ‘Duffin’ – the donut-muffin hybrid that has been made and gradually popularised by Bea’s of Bloomsbury since 2011, and that is now the subject of a trade mark registration by a company that supplies Starbucks (boo hiss taxes etc, etc).
Now, I’m no trade mark attorney – patents are more my bag – so if a contentious issue like this stumbled across my path, I’d be hailing down one of my esteemed trade mark colleagues to untangle it. But as it happens, I’ve spent most of this week committing as much trade mark law as possible to memory in preparation for professional exams, and this real-life example has served as excellent revision fodder.
A few basics of trademark law shed a lot of light onto this situation, and the real legal situation is rather different from the picture that might appear at first sight. Could big-bad Starbucks really stop Bea’s bakery, and others, from using the name Duffin? Well, purely as a self-training exercise, here’s my personal take on the situation.
What rights does each party have?
First, we’ll take a look at Bea’s bakery. Although they have not registered Duffin as a trade mark, they do in fact have some legal rights: in particular, they can claim the common law right of ‘passing off’. Put simply, they have acquired good will in their Duffins over the last couple of years, and can bring an action to prevent a third party from ‘passing off’ its baked goods as being Bea’s baked goods. Importantly, this passing-off right pre-dates any of Starbucks’ rights.
And how about Starbucks? They (or at least, their supplier), have a UK trade mark registration that is registered and in force. They also have an application for a Community trade mark (CTM) registration, which has been published, but not yet registered.
So Starbucks have registered rights – but are they valid?
Not a simple question to answer, but there are some good arguments that they might not be.
A word cannot be registered as a trade mark, and an existing registration for that word can be invalidated, if the word is the common name for the goods. For example, you won’t get very far if you try to register the word ‘oranges’ for ‘oranges’. So – is ‘Duffin’ the common word for a donut-muffin hybrid? It certainly seems to have been in use in recipe books, so there’s a decent argument that it is. And the publicity around this situation has ensured that most of the world now knows what a Duffin is, so even if it wasn’t the common word before this week, it probably is now! If a court decided that Duffin is indeed the common word, any registrations for the word in relation to donut-muffin hybrids, would be invalid.
There would also be another ground for invalidity that would apply at least to the UK registration – because Bea’s bakery have a passing-off right as discussed above, they could apply for revocation of the Duffin registration on the grounds of their earlier passing off right. To invalidate the CTM, the passing-off right would need to be ‘more-than-local’ (i.e. in respect of more than one country), so this is less likely.
Okay, so let’s say the rights are invalid – how can someone get rid of them?
Well, the UK trade mark registration is registered and in force, so to cancel that right someone would need to bring invalidation proceedings on the basis set out above. Anyone could bring proceedings on the grounds that Duffins is the common name for the word, and Bea’s bakery could bring invalidation proceedings on the grounds of the earlier passing off right (as could anyone else with a claim to such a right). The proceedings would be heard by the UKIPO, and would probably take just over a year.
As for the CTM, crucially, this is published but not yet registered. This means that third parties can now have a pop at getting rid of the application before it is registered. The relevant procedure in this case is the procedure for filing third party observations – anyone who wants to can submit observations to OHIM (the Office that oversees CTMs), at no cost. The observations might argue, for example, that the word ‘Duffin’ is the common name for the donut-muffin hybrid, and might include evidence to support that argument. OHIM would then consider if the observations should be acted on, and ultimately, the application could be rejected by OHIM on those grounds before it is registered.
Well, the first thing they would need to do would be to launch a pretty hard-core campaign to prevent the word Duffin entering common usage (too late, I hear you say? Let’s all watch for new entries to the OED next year…), otherwise the registration could be revoked.
Could they use them to prevent Bea’s bakery calling their duffins Duffins? In short, no – as long as Bea’s Bakery could demonstrate their earlier passing off right, this would be a defence to infringement of the registered trade mark, and they would be able to continue using it (though only in the locality in which it had already been used).
So, magnanimous though it might seem that Starbucks have kindly decided to allow Bea’s bakery to continue calling their products Duffins, they probably wouldn’t have a leg to stand on if they tried to enforce their registration against them. Not to mention the negative publicity effect it would inevitably have for Starbucks!
So, you mentioned that Bea’s bakery had a passing off right – could they, in fact, stop Starbucks using the word Duffin on that basis?
Also not a straightforward answer. To prevent Starbucks using the word ‘Duffin’, Bea’s bakery would need to show that Starbucks were misleading the public (whether deliberately or not) into believing that the Starbucks Duffins were Bea’s bakery’s Duffins. They would also need to show that they suffered damage as a result. This, unfortunately is probably a case of Goliath beating David: It is unlikely that a significant proportion of the public would consider the Starbucks Duffins to be those of Bea’s bakery, since anyone who now knows of the Duffin saga also knows that Bea’s bakery categorically do not supply Starbucks.
If I were Bea, I’d be pretty comfortable with the legal situation*: i) the earlier passing off right is a shield against any accusation of trade mark infringement ii) there are pretty good grounds for invalidating the UK registration, and iii) the CTM application is still at a stage where there is an opportunity to knock it out at relatively little cost.
Commercially speaking, I’d also be rather chuffed – with any luck, this will see Duffin sales escalate to spectacular new levels. I, for one, will be heading down to see Bea to get my mitts on a tasty Duffin as soon as I possibly can.
Emily Weal 11 October 2013
*Though of course I would verify this with a trade mark attorney and definitely wouldn’t rely on a blog article about the subject!