The Supreme Court ruled in favor of the Bimbo group in its legal battle over the use of the Donuts trademark, which defines the iconic sandwich as round and, generally, with a hole in the center. After a lawsuit started in January 2017, the High Court accepted the appeal presented by the company of Mexican origin against the use of the name by third parties, in this case the company Atlanta Restauración Tematica, against which legal proceedings were initiated.
In its original lawsuit, Bimbo Donuts Iberia, the Spanish subsidiary of the food group, asked Atlanta to stop using the signs Donut, Donuts or Redondoughts in the commercial sweets sector in Spain, believing that this represented an erosion and weakening of the distinctive character of the brands it owned. He also asked for damages.
Some appeals that were rejected at first and second instance. Atlanta argued that the use of the word Donut was insignificant and never as a trademark, and that it had already been eliminated and because, among other reasons, its frozen donuts are marketed to restaurants and hospitality, i.e. to professional customers, which could leave no room for misunderstanding. A thesis that was validated by the judges of first and second degree. The latter, in fact, recalled that the term donut is descriptive and that it is admitted as such by the Royal Academy of Language. This he defines as a “doughnut-shaped piece of spongy dough, fried and usually glazed or covered in chocolate.”
Having said this, Bimbo filed a double appeal: one for procedural violation, the other for cassation. The first was rejected by the Supreme Court, but the second was not. The court holds that the use of the term, while descriptive and non-commercial, must be “fair.” “It cannot be ignored that the use of the same word by Atlanta may in itself imply a misuse of the reputation or notoriety of the Donut marks, with the consequent deterioration of their distinctive character and reputation,” states the ruling, brought by The confidential. “It is enough for the relevant public, in front of the compared sign, to evoke the renowned brand and establish a mental connection, which can lead to three risks or damages for the renowned brand: dilution, (…), loss of prestige; and parasitism, when the third party unduly benefits from the attractive power of the brand, even without proving direct damage to the owner”, he adds.
The Supreme Court also points out that Atlanta used the term Donut, and not donut, as stated in the RAE. “Under these parameters, Atlanta’s action cannot be considered to have served the legitimate interests of Bakery (Bimbo) as the owner of the renowned brand.”
Atlanta’s sentence boils down to the cessation of use of the Dónut brand. The Supreme Court does not impose costs. According to Bimbo, the ruling “constitutes an indestructible precedent in the defense of intellectual property in Spain” and “recognizes the extraordinary reputation, guaranteeing it the maximum legal protection and confirming that the unauthorized and descriptive use of the term Donut for commercial purposes constitutes a violation of trademark rights”.
