Bakery Donuts Iberia S.A.U. is the owner of the well-known Spanish trademarks ‘DONUT’ and ‘DONUTS’, which designate bakery products included in class 30 of the nomenclature. However, the company Atlanta Restauración Temática S.L. marketed, through its website, doughnuts under the brand name ‘REDONDOUGHTS’ which were identified as ‘donuts’ in the product description.

In view of this situation, Bakery Donuts filed a lawsuit against Atlanta for infringing its trademark rights and engaging in unfair competition by developing a strategy to erode and undermine the distinctiveness of its registered trademarks. However, Atlanta opposed the lawsuit, arguing that its use of the word ‘donut’ had been insignificant and not as a trademark. The lawsuit was dismissed in the first instance because trademark infringement was not found. In the second instance, the appeal filed by Bakery Donuts was dismissed because the Provincial Court considered that the term ‘donut’ was descriptive of a type of doughnut, as recognised by the Royal Academy of Language.

Bakery Donuts appealed the Provincial Court’s judgment, arguing that it had not assessed whether the use of the term ‘donut’ on the defendant’s website could be classified as a legal practice in industrial property law. It also argued that the legitimate interests of the owner of the renowned trademarks were not being taken into account, as the defendant’s use of the word ‘donut’ could imply undue exploitation of the reputation or notoriety of Bakery’s trademarks and undermine the distinctive character or notoriety of the Donuts trademarks.

The Spanish Supreme Court considered that the appealed judgment had based the descriptive nature of the term “donut” on its acceptance by the RAE. In this regard, the court notes that the dictionary includes the term with the accent derived from its Spanish pronunciation ‘dónut’ (not ‘Donut’), together with an express mention indicating that the word comes from the registered trademark Donut®, thus excluding the generic nature of the term. Likewise, the court indicates that the lexicalisation of a trademark does not imply a reduction in its distinctiveness if its trademark origin is recognised in the dictionary.

Atlanta used the sign Donut in its online catalogue, rather than the word ‘dónut’ as found in the RAE dictionary. Instead, it could have used other alternatives to describe its product, such as “roscos, rosquillas or berlinas”, without needing to use another company’s trademark, which could undermine its distinctive character and reputation.

For all the above reasons, Atlanta’s actions are determined to be unlawful under Bakery’s trademark rights. However, given that Atlanta’s use of the Donut trademark has been limited to parts of its website that are not particularly prominent (product descriptions), brief, and minimal, and the fact, that the offender has formally committed to refrain from using the term in the future, the award of compensation to Bakery is not considered justified.

 

Spanish Supreme Court Judgment 4788/2025 of 28 October 2025