Product Creation and Brand Protection: The Pitfalls of Duffins

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Product Creation and Brand Protection Recipes Coca Cola ImageSpurred on by the popularity of cookery programmes such as The Great British Bakeoff, bakers have reportedly been expanding their product lines to include hybrid bakery products such as ‘duffins’ (doughnut fried muffins), ‘cronuts’, (donut fried croissants) and ‘townies’ (a combination of tart and brownie).  This flurry in product creation has turned out to be unexpectedly controversial, as bakeries have attempted to stop other bakeries selling these products by using trademarks.

Any business that creates innovative products is interested in how these can be protected from being copied by competitors. Businesses in the food and drink industry often find it frustrating that recipes are not protected by copyright. Recipes can be copied, changed and circulated without legal redress for the originator. This does not mean that it is not possible to secure protection for a successful recipe.

A useful way to protect recipes is by keeping the recipe secret. Coca-Cola is an example of a thriving recipe that is protected by trade secrets. Any business that wants to use trade secrets should take legal advice early in the product development process to ensure that the appropriate confidentiality arrangements are put in place.

Another useful legal protection for recipes can be found in trademarks. If the business can develop a brand name or other elements of branding to market their food products, then trademarking a name can help protect the product the brand is used for, even products that can be easily copied. Think about food products like Bisto, who have managed to maintain a strong market share for an everyday food product using Bisto branding for over 100 years.

A UK trademark for DUFFIN has recently been registered in the name of Rich Products Limited, a bakery wholesalers who supply retailers like Starbucks. The brand name CRONUT is also trademarked. Independent SMEs manufacturing hybrid bakery goods now run the risk of trademark infringement if they use the names ‘Cronut’ or ‘Duffin’ for their own products. Disputes about trademark infringement can be time-consuming and costly for an SME.

Branding strategies of start-up businesses often focus on the protection of the business brand name. Creating an ‘umbrella’ brand, so that all the goods and services a business sells use the same brand, is often an efficient branding strategy for an SME as energy can be focused on building up goodwill in one brand name. However, it is important not to forget that products can be separately protected, and that giving particular goods or services their own distinctive brand name might create a commercial advantage. For example, Rich Products and their distributors now have a commercial advantage as only they can legitimately use the brand name ‘duffins’ for donut-muffin hybrids.

In order to benefit from trademark protection, the name chosen for a product must fit the criteria for trademark protection. In particular, it must be distinctive and not descriptive. The words ‘muffin’ and ‘donut’ are not trademarkable, because they are generic descriptive terms. The word ‘duffin’ could be seen in a similar light as it just merges the two words to describe a combination product, although combination words like this can have many variations. The word ‘duffin’ is not in widespread use yet, so the name contains an element of surprise or creativity that some might consider distinctive and therefore trademarkable. As hybrid bakery goods become more popular, this distinctiveness could wane.

When using brand names that verge on descriptiveness, early trademark registration is essential. Without registered trademark proprietors rigorously enforcing the distinctiveness of marks, the terms ‘cronut’ and ‘duffin’ might well go the same way as ‘sellotape’ and ‘hoover’, which both started out as brand names and are now generic descriptive words.  Avoiding descriptiveness in a product name should be part of a product development strategy. Descriptiveness should also be avoided if trade secret protection is sought for a recipe – keeping a secret is no use if it can be easily guessed.

The game is not over for bakery sellers. The underlying hybrid bakery products themselves are not protected; they can be freely made and traded. However, bakery businesses are going to have to carefully consider their product branding. Greggs, for example, are now marketing a product called the ‘Gregg-nut’. Bea’s of Bloomsbury are reportedly challenging the trademark registration for DUFFINS, on the basis that they have been using the name for their own products for over two years, and it will be interesting to see the outcome. Businesses seeking to exploit the popularity of certain products should always seek legal advice, both on how they can use trademarks to protect their own products, and on how their businesses may be affected by the trademark registrations of competitors.

Product manufacturers and developers often focus on brand protection for their business name, and don’t seek advice about the protection afforded to their products by intellectual property law until their products are already on the market. It is important to consider your brand strategy for your products from the beginning of the product development process and to obtain legal advice on trademark protection if your product is not eligible for patent or copyright protection.