The recent Supreme Court ruling confirming that "donut" and "Donuts®" are not the same thing It puts an end to a lawsuit that began in 2017 and sends a strong message to the market: The inclusion of a term in the dictionary does not, in itself, eliminate the legal protection of a registered trademarkThis resolution, of enormous relevance to business owners, managers and legal officers, clarifies the limits of descriptive use and strengthens the protection of renowned brands in Spain.
La decision of the High CourtThe ruling issued by the Civil Chamber on October 28, 2025, considers that the use of the term "Donut" by a third party was not a fair descriptive use and violated the trademark rights of Grupo Bimbo, owner of the well-known Donuts® brand.
Origin of the dispute: generic use or trademark infringement?
Atlanta Themed Restoration used the term "Donut" on its website to describe some doughnuts marketed under their own brandDespite not holding any rights to said name, the defendant argued that it was merely a descriptive use of a pastry product.
However, Bakery Donuts (currently Bimbo Donuts Iberia) considered that such use implied a unfair exploitation of the reputation of the Donuts® brand, a renowned brand with more than 70 registrations in the OEPM that include said name.
After an initial dismissal in the first instance and its confirmation on appeal, the Supreme Court, in this recent ruling, reviews the matter on appeal and establishes doctrine on renowned trademarks.
Dónut vs. Donuts®: lexicalization is not vulgarization
One of the central arguments in the litigation was the inclusion of the term “donut” (with an accent mark) in the Dictionary of the Royal Spanish Academy. The Supreme Court clarifies a key issue:
- The RAE expressly recognizes the trademark origin of the term.
- That inclusion implies a lexicalization, But It does not imply a loss of distinctive character or vulgarization of the brand.
The Supreme Court makes a precise distinction between:
- Lexicalization: incorporation of a term into common language.
- Loss of distinctiveness: a process of widespread use that turns a brand into a generic term, which here has not occurred.
Therefore, Donuts® remains a fully protected trademark, even though the term "donut" exists in everyday language.
The limits of descriptive use according to Trademark Law
Article 37 LM: the loyalty requirement
The ruling is based on the Article 37 of the Trademark Law, which allows the descriptive use of other people's signs only if it is carried out in accordance with fair industrial and commercial practices.
The Supreme Court concludes that, in this case, such loyalty was not present, especially since it is a renowned brandEven a seemingly descriptive use can be unlawful if:
- It generates a mental link with the protected trademark.
- dilution of the distinctive character.
- Assumes loss of prestige.
- It implies parasitismIn other words, to benefit from the brand's power of attraction without contributing any value of your own.
Relevant details assessed by the Court
The Supreme Court highlights several elements that reinforce the finding of infringement:
- The use of the term “DONUT” in capital letters, coinciding with the registered form.
- The absence of the accent mark and the lowercase letter (“donut”) recognized by the RAE.
- The existence of valid descriptive alternatives, such as “roscos”, “rosquillas” or “berlinas”, which would have avoided the use of the other brand.
Frequently Asked Questions about Trademark Litigation
Can I use a word if it appears in the dictionary?
Not necessarily. The fact that a term appears in the RAE (Royal Spanish Academy) does not authorize its unlimited use in economic transactions.especially if it coincides with a registered and renowned trademark.
Is descriptive use always permissible?
No. Descriptive use must be loyal and not to harm the legitimate interests of the trademark owner. For well-known brands, the level of requirements is higher.
Is confusion necessary for an infringement to exist?
Not in the case of well-known brands. It is enough that the use evoke the brand and generates an undue benefit or a decrease in its value.
What consequences can such an infraction have?
The immediate cessation of the infringing use and, in certain cases, compensation. In this matter, the Court does not award damages because the use was limited and has already ceased.
Did the Supreme Court analyze the concept of secondary meaning in this ruling?
No. The Supreme Court He did not go into analyzing the concept of secondary meaning nor does it base its decision on the acquisition of subsequent distinctiveness. The legal analysis focused exclusively on the limits of descriptive use provided for in article 37 of the Trademark Law and in the requirement that such use be loyalespecially when it comes to a renowned brand.
A key precedent for business strategy
This ruling sets a relevant precedent in industrial property, by making it clear that:
- The presence of a brand in everyday language It does not automatically weaken its protection..
- Companies should exercise extreme caution when using terms that coincide with well-known brands, even for descriptive purposes.
- The branding and commercial communication strategy 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 for the protection of intangible assets. Our team supports companies in preventing legal risks and defending their trademark rights, patents, industrial designs, and copyrights, with a rigorous approach focused on legal certainty.
Maria CadarsoSenior Associate specializing in Litigation.
