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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.




UGG Trademark Disputes

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Trademarks are territorial, which means you register them country by country wherever you do business. Although this is can be expensive, and it may be tempting when starting out, to think it’s easy enough, in theory, to trade in other countries under a different brand, UGG is an example of what can happen when a trademark is not available to a business internationally.

TMRBoots known as UGGS are worn around the world particularly in rural locations. The term UGG for this specific type of sheepskin boot has been used in Australia since the 1950’s and now many consumers believe the boots are from Australia.

The term UGG-BOOT was registered in 1971 in Australia, but then lapsed as it was not used. Then in 1999 the American outdoor company Deckers registered the word mark UGG AUSTRALIA. Celebrities began to wear the boots and by the early 2000’s the boot became popular and sought after all over the world. As a result Deckers became more protective of the brand and began issuing legal threats against companies in Australia who were using terms similar to UGG such as UGH.

In 2006 a competitor of Deckers, UGG-N-RUGS successfully applied to remove UG, UGG and UGH Boots from the Australian Trademarks register on the grounds that the term was generic and descriptive of a specific type of sheepskin boot in Australia.

Deckers still has its trademarks in the EU and the US However, in Australia the company  aroused much controversy over the question whether the name is a brand name or a geographical indicator for a type of boot., and as mentioned Deckers lost its trademark there.  The fact that Deckers is still a registered trademark outside Australia means that competitors cannot market their boots as UGGs in the EU and USA. Instead they have to use terms like Australian Sheepskin boots to describe the boots.

Competitors are trying to change UGG into more of a regional mark like Champagne and want consumers to associate UGGs with a particular type of sheepskin boot made in Australia and not a trademark which indicates they are made by Deckers. In response, Deckers is focusing on the fact that its UGG boots are made in China and not Australia.

The fact that the UGG trademark has been revoked in Australia but is still registered in the EU and the US presents Deckers with serious challenges.

It is difficult for Deckers to tackle the companies selling UGG boots from Australia on the internet as I found out when I tried to buy a pair of UGG boots for my daughter back in 2009. As I wrote on the Azrights IP Brands blog that’s when I became aware that UGG is not a trademark in Australia and Deckers can’t stop vendors from Australia labelling their boots as UGGs within Australia. It is notoriously difficult to prevent sales online from entering the EU or American markets once to reach  consumers in these markets. This is despite the fact that many of them are likely to have bought the boots online believing them to be the genuine article, and not from some Australian boot company producing a lower quality boot.

Arguably, Deckers could do more to prevent consumers from being confused. For example, they could rebrand so as to remove the word Australia, especially given that its UGG boots are in fact made in China. It would be even better if the company were to change its brand to DECKERS UGG.

Deckers would benefit from taking swift action to prevent confusion in the market place, and to ensure the name UGGs is associated with its own quality products. The importance of educating the public about its boots so people are not duped into buying UGG boots from Australia when what they’re actually looking for are branded UGG Australia boots from Deckers can’t be overstated. What do you think? Have you had any experiences buying UGG boots? Let us know by leaving a comment below.

GOOGLE PLUS – Brand Naming Strategy

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Google’s launch of its social networking site, Google Plus, has caused a lot of attention and speculation in the media.  However, it is not just the site itself that has provoked discussion, but its name too.

Google’s decision to create its social media site under the Google brand has been criticized and praised in equal measure.      

Unlike Google, Apple is a company that has launched its products and services under new names, for example, recently using a lowercase letter ‘i’ to distinguish a service as belonging to it.

Whilst this strategy has been successful in some cases, in others Apple’s use of common words such as ‘phone’ or ‘book’ in combination with ‘i’ has caused it to face lawsuits for trademark infringement as mentioned in our previous blog, Apple under fire again-this time over ibook.

Although Apple has generally managed to fight or pay its way into keeping its chosen brand names, what is for sure is that Google by using its pre-existing trademark for its other services, will be unlikely to attract costly lawsuits over trademark infringement.

Google’s brand strategy

It is not just with Google Plus that Google has used this lower cost more straightforward approach to its new names.  It has launched other products under the GOOGLE brand name such as Google News, Google Translate, and Google Chrome.

As well as this, alongside the introduction of Google Plus, two of its existing services are also getting a rebrand. The names for Google’s longstanding products Picasa and Blogger are going to be retired.  Picasa will become ‘Google Photos’ while Blogger will become ‘Google Blogs’.

Brand unification

Ben Parr of Mashable states that this ‘brand unification effort will be the largest in the company’s history’. By bringing more of Google’s products under one brand name, this will help to strengthen and solidify the Google brand. Over the past few years Google has managed to be a consistently highly rated brand, meaning that any new products will benefit from using the company’s name.

However, despite the fact that Google’s strategy of launching its social networking site under the existing brand name has some upsides, its decision has come under scrutiny, mainly because some think that the name ‘Google’ is associated with a search engine rather than a Social Network, so that when they hear the name Google, ‘social’ does not enter their heads.  Therefore,  some have criticized Google for not launching its social media site under a different brand name

Brand extension

Is it really going to strengthen Google’s brand to extend the original brand name to other areas? Or is the power of a brand in its ability to pinpoint a specific service to one name? Whereas before, the word ‘Google’ was synonymous with its search engine service, extending this meaning to cover social networking as well could weaken or strengthen the power of this brand.

Rather than trying to launch a new service, separate from its search engine one, what Google is trying to do is to make Google more ‘’people centric”. Vic Gondotra, the leader of Google’s social efforts, statedWe’re transforming Google itself into a social destination at a level and scale that we’ve never attempted — orders of magnitude more investment, in terms of people, than any previous project”. Rather than trying to provide just a social media service, Google itself wants to become more social.

So when branding products, it seems Google’s approach is one that might eliminate lawsuits over trademark infringement, and also help to strengthen the brand as a whole. As the web becomes more social, and Google is in danger of being taken over and replaced by sites such as Facebook, Google’s decision to rebrand itself as ‘social’, bringing the company name into this brand, will help it to redefine itself in accordance to the changing nature of web usage.


One problem Google has been facing is the increasing tendency for people to use its name as a verb.  In recent times people have talked about ‘goggling’ or ‘facebooking’. While it may be flattering for a brand to gain such recognition this could be disastrous for its trade mark rights.

Take for example ASPIRIN.  It used to be a trademarked name for a pain reliever medicine made of acetylsalicylic acid which was made by only one company.  Now it is synonymous with that type of pain killer and made by many companies.

Many other once famous marks are now only generic words and no longer trademarks including CATERPILLER, HOOVER, THERMOS and WALKMAN while XEROX and KLEENEX have gone dangerously close to losing their marks.

When a mark is generic it means the trade mark is synonymous with all versions of that product.

There are steps you can take to prevent this from happening. One way to reduce risk is to use generic descriptors to clearly differentiate the trade mark and the product.  That is, Xerox copier or Kleenex tissues, and to ensure everyone else does likewise.

If a mark becomes generic it is almost impossible for the mark to be registered again. It will be deemed to lack distinctiveness and then everyone will be able to use it.

By choosing to stick with its existing brand name, for Google Plus is Google helping or hindering itself?  Will Google’s decision to use its name with brand extension descriptors put it in a better or worse position to avoid genericity?   What do you think? I hope to hear readers’ thoughts.

ELIO FIORUCCI – Owning own name?

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In our earlier blog piece Fashion Industry. Fiorucci. Use of own name we wrote about Mr Fiorucci, a fashion designer who had achieved certain renown in Italy during the 1970s.  This is an update on the progress of that case, which has made its way from OHIM, through the Board of Appeal, to the General Court and eventually landed in the European Court of Justice, which recently rendered its decision.

In 1990, due to some cash problems, he sold his company, Fiorucci SpA, to Edwin Co. Ltd, a Japanese Multinational, along with its entire creative assets including all the trademarks it owned and “all the rights exclusively to use the designation ‘FIORUCCI’”.                   

Subsequently, Edwin registered as an EU word mark the name ELIO  FIORUCCI.  However in 2003, Mr Fiorucci brought an action to invalidate this registration on the grounds of his right to the name under a national law. The Cancellation Division duly declared the ELIO FIORUCCI community trademark invalid holding that Elio Fiorucci had an earlier right under Italian laws.  These laws stipulated that well known personal names may be registered as a trade mark only by, or with the consent of that person. In this case, the ELIO FIORUCCI mark had been well known, and no such consent had been given.

That decision was then annulled by the Board of Appeal, who held that his situation did not fall within the scope of the Italian regulations, which were designed to prevent third parties from exploiting for commercial purposes the name of a person who had become well known for non-commercial activities. As Mr Fiorucci’s name was renowned as a result of commercial activity the Board found that the rule did not apply.

Fiorucci took the case to the General Court, hoping to have this decision set aside, and the registration revoked or declared invalid. The Court refused to revoke the registration on the basis that it was likely to mislead consumers. However, it did reject the Board’s view that the situation fell outside the scope of the Italian regulations, on the basis that the wording of the national law does not require renown to derive from non-entrepreneurial activity. The effect was merely to set aside the decision of the Board of Appeal, and leave standing the Cancellation Division’s declaration of invalidity.

The General Court’s interpretation of this national law has now been upheld by the European Court of Justice following appeal by Edwin. The ECJ rejected Edwin’s argument that the right to a name under the Italian law was limited to its protection as an attribute of personality, holding that the provision may be relied upon as a right to commercial exploitation of a name.

It is interesting to note that Elio’s case might have reached a different outcome if the Board of Appeal had examined Edwin’s argument that they were assigned trademark rights in the name ELIO  FIORUCCI.  As the Board did not do so, the ECJ found that the General Court was correct in not dealing with this question, as it was not within the Court’s power to substitute its own reasoning on issues where the Board of Appeal had not adopted a position.

Important points to take away from this case include:

  1. The holder of rights to a name is entitled to prevent its use as a Community trade mark where national law so permits.
  2. If there is to be an assignment of trademark rights in some elements of a personal name, like in Elio’s case (FIORUCCI), then the extent of that assignment should be made very clear, for example whether the assignment extends to the full name of that person.
  3. Provided that the essential function of a trademark is maintained (i.e. to guarantee the nature, quality or origin of goods or services), and there is no likelihood of deceiving consumers, then an individual is unlikely to succeed in securing revocation of a trademark for their personal name which was assigned earlier to another business now owning the mark.

Ann Summers & Marks & Spencers

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When Ann Summers parodied Marks and Spencer’s well known successful meal deal campaign Marks and Spenser threatened to sue

M&S’s Meal Deal offered a main meal, a side dish and desert for £10. In Ann Summer’s campaign they offer a ‘Squeal deal’, which includes lingerie as the ‘Main’, a sex toy as a ‘side’ and body cream as a ‘side’ for £29.

As a play on the famous Marks and Spencer slogan, the promotion stated ‘its not just sex its Ann Summers sex’. On top of this they copied the black and lime colours of the M&S logo, and switched the lettering around so that it now read S&M.

The chief executive of Ann Summers, Jacqueline Gold, explained that the campaign was intended to be a ‘respectful nod’ to M&S’s ‘iconic meal deal’ She said ‘You hear the adverts, you see them and we all know who it is; what we wanted to do was add a naughty twist. We all know imitation is the greatest form of flattery and I hope that Marc Bollan (M&S boss) agrees.’ She claims that all Ann Summers wanted to do was add humour to the well-known campaign.

However, M&S did not see the campaign this way and  stated that they were considering legal action. A spokesman for M&S said ‘Over the last 127 years Marks & Spencer has built up a great reputation for quality and trust in the hearts and minds of the British public. When we believe these values are being infringed, we do whatever we can to protect our brand and our customers. We therefore are taking legal advice with a view to issuing legal proceedings.’  Jacqueline Gold has now admitted ‘Maybe in hindsight it was a squeal too far… By the time this goes to print I hope to have spoken personally to Marc Bollan and shared this with him’.

The Ann Summers promotion, which was due to run until May 2nd, has now been withdrawn and traces of the campaign have been removed from both their website and all stores.

M&S’s concern about the Ann Summer’s campaign was that it might damage their reputation as a family supermarket and clothing store. Ann Summers has now apologised and hopes they have not caused any injury to the companies’ reputation. As Rosie Baker points out in an article in the Marketing Week, ‘That is the power of a strong brand’.

Despite withdrawal of the campaign, Ann Summers got plenty of coverage.  It would be interesting to know if it boosted their sales.

Trade mark opposition by London Underground

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Trademarks are registered against classifications, meaning they permit you to use the brand for certain pre defined activities. You set the business categories you wish to use for your trade mark in your application. This means the scope of your rights in the name or logo is limited.

There are 45 classes of goods and services with thousands of descriptions in each class so it is quite common to have the same names registered by businesses operating in different classifications – that is, business areas.  Evidently for the public there is unlikely to be confusion between, say, a law firm that shares the same name as a chemical factory.

London Underground

TFL have registered a number of trade marks for LONDON UNDERGROUND including for the logo UNDERGROUND.  One of their latest registrations for UNDERGROUND was an EU mark granted in April this year. This mark is registered for rather surprising classifications for a predominately transport service, such as a nail products.  They also cover café bar and restaurant services in their applications.  It seems likely that TFL are not actually using their mark for all these classifications.

 Nonetheless, the Underground Restaurant, a business organising supper clubs across London, found their application to register a trade mark opposed by TFL on the basis that ‘confusion could arise’  in the eyes of the public.

Lock out

Some trade mark owners try to lock out others from classifications by registering in a number of classes.  For example, Red Bull chose to register in all 45 classes with the clear intention of not sharing their name with non competing businesses.  But trade mark owners that do not use a classification for 5 years may be challenged for non use. 

So, TFL has 5 years to begin to use its UNDERGROUND trademark registration.  Having registered in 2010 it will be valid for restaurant services for the next five years.

 Brands of reputation

Once a brand becomes well known different rules apply.  Their reputation allows them a wider scope, including to prevent non related businesses sharing their name.  If others are taking unfair advantage of their name, or it would be detrimental to the brand for others to use the same name, such applications to register would not succeed.  For example although TWITTER is widely known as a social media interface and has registered a trade mark for this activity, they have been able to thwart attempts by others to register the mark TWITTER for bird feed, drinks fitness information and precious metals. 

TFL is using similar arguments in their letter to the owner of The Underground restaurant stating our ‘Client is also concerned that your use of The Underground Restaurant trade mark could be detrimental to our client’s brand’

 Interestingly, however, unlike the word TWITTER which is clearly a fanciful concoction, the trade mark UNDERGROUND is both a logo, which should diminish the power of the word element, and UNDERGROUND is a generic term, and arguably descriptive.