Grupo Bimbo has ended litigation that began in 2017 to defend its iconic Donuts brand against the use of the term “Donut” in the commercial field by Atlanta Restauración Tematica, dedicated to wholesale trade and distribution in the hospitality sector. The Supreme Court ruling, dated October 28, recognizes the exclusivity of the term to the company.
The decision marks the end of a legal battle that has dragged on for nine years. The conflict began, as stated in the sentencing document, when Atlanta Restauración offered some donuts that it called “Redondoughts” and that it described as a “Donut.”
Bimbo Donuts Iberia has been the owner of the term “Donut” since 1962
This caused the lawsuit by Bakery Donuts – now Bimbo Donuts Iberia. This is the owner of the term “Donut” in Spain, requested on March 21, 1962 and granted on September 8 of the same year, to designate pastry, pastry, sweets and confectionery products and preparations.
It is also the owner of the national trademark “Doghnuts” applied for on December 5, 1988 and registered on June 18, 1994, to designate products of the same class.
Bakery Donuts filed the lawsuit stating that Atalanta had violated trademark rights and engaged in acts of unfair competition by developing a strategy of erosion and impairment of the distinctiveness of the Donut brand.
Atalanta defended itself by pointing out that the use of the word “Donut” had
“been insignificant and not as a trademark“, and that it was removed from its website. It also noted that its product was aimed at the professional public and not the final consumer.
The first instance ruling dismissed the claim in its entirety, noting that there was a risk of confusion and considering that the products were aimed at different audiences. But Backery Donuts filed an appeal that was also dismissed, and finally filed an extraordinary appeal for procedural infringement and an appeal for cassation, which is what has now ruled in its favor.
The ruling that the Supreme Court has now published confirms the status of a reputed brand for Donuts, according to Grupo Bimbo in a statement. With this, Bimbo Donuts Iberia’s appeal is upheld and it is confirmed that the unauthorized use of the term for commercial purposes represents a violation of trademark rights and condemns Atlanta to cease all use of the Donut concept in the commercial field of pastries in Spain. However, it has not imposed compensation or coercive sanctions.
Furthermore, according to Grupo Bimbo, the ruling recalls that the incorporation of a trademark into language dictionaries, and its colloquial use, does not entail a loss or limitation of the exclusive trademark rights of the owner, and therefore, they must be respected by the market. This is mainly due to the fact that the Royal Spanish Academy includes the term “donut”, with an accent and in lower case, thus establishing a differentiation with the concept “Donut”.
As the company points out, the ruling sets a precedent in terms of the defense of intellectual property in Spain. Grupo Bimbo points out that Donuts in “a legend of pastries and a symbol of quality that has conquered the hearts of homes for decades”.
“This victory is not a mere formality. It is the recognition of our daily effort, the undeniable quality and the emotional bond that we have built with our clients.“, commented Carlos Tatay, Vice President of Marketing at Grupo Bimbo. “We celebrate this resolution as an impetus to continue innovating and leading the category, knowing that the excellence of the brand is now legally protected in its maximum expression.”.
