Cases of all types and types pass through the Supreme Court table. That’s nothing new. What is curious is that its magistrates rule on a lawsuit in which pastries, linguistics and brands are combined, all well mixed in a legal dispute so full of chiaroscuro that justice has taken a while almost a decade in reaching a conclusion. As if that were not striking in itself, at the center of the dispute was one of the most famous sweets in the country: Donut.
We explain ourselves.
Word of the RAE. If you open the RAE online dictionary and type “donut” you will see that the meaning From the word is clear, at least to academics: a donut is basically a “spongy, donut-shaped piece of pastry, fried and usually glazed or covered in chocolate.” A type of donut. The RAE also clarifies that the term comes from the registered trademark Donut. The million dollar question is… Is donut (like that, in lower case and with an accent) the same as Donut?
Does the fact that the first word has been in the Royal Academy’s dictionary for years allow any Spanish company to use it freely or is it the exclusive property of the company that popularized it, Bakery Donuts (Bimbo), owner for decades of the DONUT brand and others that have included the term?
Almost a decade of lawsuits. The above questions are more than just questions thrown into the air or theoretical reflections. They are at the bottom of a dispute that may date back to beginning of 2017when a long legal tug-of-war began centered on the word “doughnut.” Around that time, Bimbo Donuts Iberia filed a lawsuit before the Commercial Court No. 9 of Madrid when it detected that another third-party company (Atlanta Restauración Tematica) was offering donuts on its website that, although they were called Redondoughts, were described as “doughnuts.” For Bimbo, this represented a violation of its trademark and it decided to sue.
Why’s that? The Confidential has had access to the last ruling in the case, which allows us to understand the arguments put forward by both parties. For Bimbo, the fact that another company used the term represented two things: first, a use of its brand, which has been cared for for decades; second, an example of unfair competition that affects their interests in the candy market.
For Atlanta things are different. In your opinion“donut” is nothing more than a word in common use, a word recognized by the Royal Academy. As if that were not enough, he claims that he has not even used it “as a trademark”, but rather on his website, where at the time it had an “insignificant” reach. In fact, the company is dedicated to selling to professionals in what is known as ‘Horeca’ channela label that basically refers to establishments such as hotels, restaurants and cafes.
To the Supreme. Bimbo’s claims were unsuccessful in the first instance. Not in second either. As remember Five Days, This last court even recognized that the word donut is descriptive, in common use and appears in the RAE dictionary. The multinational did not give up and the issue ended up in the Supreme Court, which is the one that has had the last word. The most curious thing is that for its magistrates the reality is somewhat different than for previous judges.
“It cannot be ignored that the use of the same word by Atlanta may imply per se an improper use of the reputation or notoriety of the Donut brands, with the consequent impairment of their distinctive character and reputation,” reasons the ruling of the Supreme Court, which even speaks of the risk of “loss of prestige.” “The third party unfairly benefits from the attractive power of the brand.”
In case there were any doubts, the ruling recalls that Atlanta did not exactly use the term RAE (with a lowercase letter and an accent), which leads the court to point out that the company did not act in a “loyal” manner towards the “legitimate interests” of Bakery. “It affected its renown, distinctive character and exclusivity,” he remarks.
An armored brand. The conclusion? Whatever the RAE says, the unauthorized use of the word ‘Donut’ for commercial purposes (at least in Spain) violates the rights brand of Grupo Bimbo. Hence the multinational spoke of a “historic legal victory.” In his opinion, the ruling recognizes “the renown” of his brand and grants it “maximum protection.” In reality, since Atlanta has already removed the word from its website and its use was “limited,” it does not impose compensation or a fine.
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