Spanish Supreme Court backs Bimbo: 'Donut' is not a generic term - EU trade mark dispute: OWN and genuine use of a trade mark

Spanish Supreme Court backs Bimbo: 'Donut' is not a generic term

The Spanish Supreme Court has ruled in favour of Bimbo in the 'Donut' dispute. On 28 October 2025, in case STS 1505/2025, the First Civil Chamber of the Spanish Supreme Court resolved a dispute that began in 2017 between Bakery Donuts Iberia, S.A.U. (Grupo Bimbo) and Atlanta Restauración Temática, S.L. concerning the use of the term 'donut' to market pastries in Spain.

It is worth noting that Bimbo has owned the Spanish word mark DONUT (no. 399563) for Class 30 bakery and pastry goods since 1967, along with several later registrations, including the DONUTS family of marks, which are well known. In 2017, Bakery Donuts sued Atlanta for marketing pastries as 'donuts' on its website, seeking an injunction and damages, as well as a ban on the use of the term. The claim was unsuccessful on first instance and first appeal, on the basis of the descriptive nature of the term 'dónut' due to its inclusion in the Royal Spanish Academy (Real Academia Española) dictionary, which defines it as 'a spongy, ring-shaped pastry, fried and generally glazed or chocolate-covered'.

In this sense, the Supreme Court drew a clear distinction between 'lexicalisation' and 'genericide'. It emphasised that including 'dónut' in a dictionary does not turn 'donut' into a generic term, nor does it, in itself, limit the exclusivity or distinctiveness of the trade mark. Indeed, Article 35 of the Spanish Trade Marks Act specifically states that, if a dictionary or encyclopaedia presents a trade mark as generic, the publisher must, at the right holder’s request, add a note indicating that it is a registered trade mark. Furthermore, the Court noted that Atlanta used the registered mark 'Donut' on its website and could have used descriptive alternatives such as 'rosquillas' or 'berlinas', rather than the specific term 'dónut'. Consequently, any use, even for a descriptive purpose, had to comply with honest practices. Therefore, the Supreme Court held that Atlanta’s use of 'Donut' infringed Bakery Donuts’ trade mark rights, ordering it to cease all use of the sign in Spain's commercial pastry sector. However, the court denied the damages claimed, as the use was very limited, restricted to non-prominent website descriptions aimed at a professional channel, and had been removed once Atlanta was notified.

EU trade mark dispute: OWN and proof of genuine use of a trade mark

On 12 November 2025, in Case T-34/25, the General Court of the European Union ruled on the dispute concerning the EU figurative trademark OWN.

The conflict began in 2022, when the Italian company Centex SpA applied to register the figurative mark 'OWN' in Class 25 of the Nice Classification for clothing. The German company Adler Modemärkte GmbH opposed the application on the basis of the earlier German word mark 'my own', also in Class 25 for a broad range of outerwear, underwear, and accessories. Adler invoked Article 8(1)(b) EUTMR on the grounds of likelihood of confusion.

During the administrative phase, EUIPO required proof of use of the earlier mark at Centex’s request. Adler submitted an affidavit from its managing director containing a sales table extracted from its merchandise management system for the period 2017–2023, as well as examples of labels and catalogues, tables of advertising print runs for 2017 and 2018, commercial newsletters from 2017–2018, and screenshots of its website and archived pages via the Wayback Machine. Despite this material, the Opposition Division rejected the opposition, holding that they were not sufficient to demonstrate genuine use.

On appeal, Adler provided additional evidence, such as three additional compilations of archived screenshots of Adler’s website, which were admitted by the EUIPO Board of Appeal. One compilation gathered screenshots that were already included in the initial file, while the other two provided archived pages from the relevant period. These pages showed numerous clothing items offered under the brand name 'My Own', complete with prices and online purchase options. Taking all of this into account, the Board found that the use of the mark my own for the subcategory “women’s outerwear” had been demonstrated. The Board then remitted the case to the Opposition Division to continue the likelihood-of-confusion assessment limited to these goods.

The Italian company Centex brought an action before the General Court on two grounds. First, it argued that the Board had incorrectly admitted evidence that was filed for the first time during the appeal process: the aforementioned compilations of archived screenshots. Secondly, it claimed that, even if all the material were accepted, genuine use had not been proven because some of the documentation lacked dates, some was dated by hand, the affidavit was internal and some items referred to the 'My Own Essentials' brand. Furthermore, no invoices or tax documents linking sales to specific products had been produced.

The Court dismissed both grounds. First, it recalled EUIPO’s broad discretion to consider late facts and evidence if they are relevant and supplement what has already been submitted. It then deemed the dated archived screenshots to be initially relevant in demonstrating outward use between 1 February 2017 and 31 January 2022. These screenshots corroborated the affidavit, showing continuous marketing between 19 February 2017 and 9 July 2022. Other corroborating evidence included catalogues and newsletters from 2017, 2018, 2021 and 2022, as well as the breadth of the online offer. This included a page listing 420 references as of 22 October 2020, as well as customer support details for Germany, Luxembourg and Austria. The Court added that, if the evidence, taken as a whole, shows real commercial exploitation, invoices are not indispensable; that a decline in sales does not preclude genuine use where the volume remains significant; and that references to 'my own essentials' do not negate use under 'my own'.