The recent Supreme Court ruling confirming that “dónut” and “Donuts®” are not the same brings an end to a legal dispute that began in 2017 and sends a strong message to the market: the inclusion of a term in the dictionary does not, in and of itself, eliminate the legal protection of a registered trademark. This ruling, which is of enormous importance to business owners, executives, and legal counsel, clarifies the limits of descriptive use and strengthens the protection of well-known trademarks in Spain.
The High Court’s decision, issued by the Civil Division on October 28, 2025, held that a third party’s use of the term “Donut” was not a fair descriptive use and infringed upon the trademark rights of the Bimbo Group, owner of the well-known Donuts® trademark.
Source of the Dispute: Generic Use or Trademark Infringement?
Atlanta Restauración Temática used the term “Donut” on its website to describe donuts sold under its own brand, even though it did not hold any rights to that name. In the defendant’s view, this was merely a descriptive use of the term for a baked good.
However, Bakery Donuts (now Bimbo Donuts Iberia) considered that such use constituted an improper exploitation of the reputation of the Donuts® brand, a well-known trademark with more than 70 registrations with the Spanish Patent and Trademark Office (OEPM) that include that name.
Following an initial dismissal at the trial court level and the affirmation of that decision on appeal, the Supreme Court, in this recent ruling, reviewed the case on cassation and established legal precedent regarding well-known trademarks.
Dónut vs. Donuts®: Lexicalization Is Not Vulgarization
One of the central issues in the case was the inclusion of the term “dónut” (with an accent) in the Dictionary of the Royal Spanish Academy. The Supreme Court clarifies a key point:
- The RAE expressly acknowledges the term's origin in the field of trademarks.
- That inclusion constitutes lexicalization, but it does not imply a loss of distinctiveness or a dilution of the trademark.
The High Court makes a clear distinction between:
- Lexicalization: the incorporation of a term into everyday language.
- Loss of distinctiveness: a process resulting from widespread use that turns a trademark into a generic term, which has not occurred in this case.
Therefore, Donuts® remains a fully protected trademark, even though the term “doughnut” exists in everyday language.
The Limits of Descriptive Use Under the Trademark Law
Article 37 of the LM: The Requirement of Loyalty
The ruling is based on Article 37 of the Trademark Law, which permits the descriptive use of third-party marks only if it is done in accordance with fair industrial and commercial practices.
The Supreme Court concludes that, in this case, such good faith was not present, particularly because the trademark in question is a well-known one. Even seemingly descriptive use may be unlawful if:
- It creates a mental association with the protected brand.
- It dilutes the distinctive character.
- It results in a loss of prestige.
- It involves free-riding—that is, benefiting from the brand's appeal without contributing any value of one's own.
Relevant details considered by the Court
The Supreme Court highlights several factors that support the finding of a violation:
- The use of the term “DONUT” in all capital letters, consistent with the registered form.
- The absence of the accent and the lowercase letter (“dónut”), as noted by the RAE.
- The existence of valid descriptive alternatives, such as “roscos,” “rosquillas,” or “berlinas,” which would have prevented the use of another party’s trademark.
Frequently Asked Questions About Litigation Involving Well-Known Trademarks
Can I use a word if it's in the dictionary?
Not necessarily. The fact that a term appears in the RAE does not authorize its unrestricted use in commercial transactions, especially if it coincides with a well-known registered trademark.
Is descriptive use always permissible?
No. Descriptive use must be fair and must not harm the legitimate interests of the trademark owner. For well-known trademarks, the standard is higher.
Does confusion have to exist for a violation to occur?
This is not the case with well-known trademarks. It is sufficient that the use evokes the trademark and results in an improper exploitation or a diminution of its value.
What are the possible consequences of such a violation?
Immediate cessation of the infringing use and, in certain cases, compensation. In this case, the Court does not award damages because the use was limited and has already been discontinued.
Did the Supreme Court analyze the concept of " secondary meaning " in this ruling?
No. The Supreme Court did not analyze the concept of “secondary meaning” nor did it base its decision on the acquisition of acquired distinctiveness. The legal analysis focused exclusively on the limits of descriptive use set forth in Article 37 of the Trademark Law and on the requirement that such use be fair, especially in the case of a well-known trademark.
A Key Precedent for Business Strategy
This ruling sets an important precedent in intellectual property law by making it clear that:
- The presence of a trademark in everyday language does not automatically weaken its protection.
- Companies should exercise extreme caution when using terms that match well-known trademarks, even for descriptive purposes.
- Branding and marketing communication strategies should always be analyzed from a preventive legal perspective.
At Elzaburu, we have extensive experience in industrial and intellectual property litigation and in providing strategic advice on the protection of intangible assets. Our team works with companies to prevent legal risks and defend their trademark, patent, industrial design, and copyright rights, using a rigorous approach focused on legal certainty.
María Cadarso, Senior Associate specializing in Litigation.