Starbucks recently climbed down over its claim to have created the ‘Duffin’ (a cross between a muffin and a doughnut).

Matt Sammon, Trade Mark Attorney and Partner at Marks & Clerk, comments on whether a recipe can be protected by copyright and whether the name ‘Duffin’ can be protected as a trade mark:

“Generally speaking, a recipe cannot be protected by copyright and so there cannot be a monopoly on the idea of a muffin crossed with a doughnut, no matter who came up with it first. Copyright does not protect an underlying idea, just the idea’s expression. Copying the way a recipe is set out in a cook book might lead to a copyright infringement, but just using the idea does not necessarily result in copyright infringement.

“Recipes are best protected as trade secrets, as in the case of famous recipes such as those of Coca-Cola or Irn Bru.

“The disagreement over the name DUFFIN presents a different issue. Generic terms like MUFFIN or DOUGHNUT cannot be protected as trade marks and so no one producer can be granted exclusive rights over them. However, there is an argument that the name DUFFIN is a coined term and has not yet become generic. This means that DUFFIN could be registered as a trade mark, giving the owner the exclusive right to use the term for bakery goods.

“Rich Products Limited clearly realised this as they have filed trade mark applications for the name for bakery goods at both a UK and European level. However, if Bea’s of Bloomsbury can demonstrate its use of the name had already developed a reputation for the DUFFIN name, it could challenge Rich’s application on the grounds of ‘passing off’.”