28 Nov The Spanish Supreme Court acknowledges the reputation of the “DONUT” trademarks in Spain and considers parasitic uses of the sign to be unfair.
The Supreme Court has put an end to a long-standing dispute —initiated in 2017— by ruling that the unauthorised and descriptive use of “DONUT” for commercial purposes infringes Grupo Bimbo’s trademark rights over its renowned “DONUT”/“DONUTS” marks.
According to the judgment, the unauthorised use of the term “DONUT”, even when used descriptively, constitutes trademark infringement if such use is not fair.
In its claim, Grupo Bimbo argued that Atlanta Restauración Temática SL used the signs “Redondoughts” —as a trademark— and “DONUT” on bakery products, thereby harming the distinctiveness and reputation of its marks, in addition to engaging in unfair competition.
The Supreme Court found that the defendant’s use was not “fair”, even if descriptive, as it could lead to undue advantage and undermine the distinctiveness and reputation of the “DONUT” marks. It highlighted risks such as dilution, loss of prestige and parasitism, whereby a third party benefits from the brand’s appeal without contributing its own value.
The judgment also notes that the defendant used “DONUT” in capital letters, matching Bimbo’s registered mark, instead of “dónut” in lowercase with an accent, as it appears in the dictionary of the Royal Spanish Academy (RAE).
Although “dónut” is listed in the RAE as a generic pastry term, the Supreme Court clarifies that its inclusion does not diminish the distinctiveness of the trademark. Therefore, its dictionary presence does not entail a loss of legal protection.
The Court ruled that Atlanta Restauración Temática infringed Grupo Bimbo’s trademark rights and ordered the company to cease all use of the sign “DONUT” in the commercial bakery sector in Spain.
From an intellectual property perspective, the ruling reinforces a key principle: the reputational value of a trademark may justify enhanced protection. The Court confirms that the owner of a renowned mark may restrict certain descriptive uses by third parties when such practices amount to parasitic or unfair behaviour.
For Grupo Bimbo, the ruling represents a “historic legal victory”, recognising the extraordinary reputation of its brands and granting them the highest level of legal protection.
Author: Mercè Hernández Gázquez
You can read the full ruling here.
Photo by Annie Spratt on Unsplash