Yes. The Spanish Supreme Court (Judgment No. 1505/2025 of 28 October) has established that the owner of a reputed trademark may oppose the apparently descriptive use of its name by a third party where such use does not comply with honest commercial practices and entails either unfairly exploiting the trademark’s reputation or undermining its distinctive character.
The dispute involved Bakery Donuts Iberia, owner of the “DONUT” trademark, which filed a claim for trademark infringement and unfair competition (under Spanish law) against Atlanta Restauración Temática S.L. for using the term “Donut” on its website to describe ring-shaped pastries marketed under its own brand “Redondoughts.” The conflict revolved around the limits of trademark rights and the scope of the descriptive use exception, requiring the Court to determine whether Atlanta’s use of the term “Donut” constituted an infringement of Bakery’s exclusive rights or, alternatively, a lawful use protected by law.
Although both the first instance and appeals considered that “Donut” had become generic and that its use was merely descriptive, the Spanish Supreme Court upheld the cassation appeal filed by Bakery, providing a key interpretation on the protection of reputed trademarks.
The High Court recalled that the descriptive use exception set out in Article 37 of the Spanish Trademark Act is not absolute and requires use in accordance with honest commercial practices, taking into account the legitimate interests of the trademark owner. It concluded that Atlanta was taking advantage of the power of attraction, reputation, and distinctive character of the well-known “Donut” trademark, and that it could have used alternative generic terms such as “ring-shaped pastries.”
The Court further clarified that the inclusion of “dónut” in the dictionary of the Royal Spanish Academy (RAE) does not imply loss of trademark protection or genericide; rather, it may even reinforce its distinctiveness and its function as a business identifier. Consequently, the Court held that Atlanta had infringed Bakery’s trademark rights and ordered it to cease using the term “Donut” in the commercial sphere of baked goods in Spain.
This ruling marks a significant milestone in the protection of corporate intangible assets, allowing the owner of a reputed trademark to restrict descriptive uses by third parties when such uses are unfair or entail reputational exploitation. At PLANA VENTURA GARCÉS, we are available to advise and assist you with any questions that may arise regarding trademark rights.
