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Spain - "Doughnut? Ah, you mean DONUT!"

A very recent Spanish judgment from the Audiencia Provincial de Barcelona (Court of Appeals of Barcelona, IP section), dated 16 July 2008, tackles the issue of generic foreign words being (or not) distinctive in Spain.

PANRICO, S.L. is the owner of the Spanish trade marks for DONUT, DONUTS and DOGHNUTS. PANRICO, S.L. has been using such trade marks in Spain to identify the popular bready round pastry rolls generally known in the English speaking countries as “doughnuts”. The transliteration of "doughnut" into Spanish results "donut" (singular), being "donuts" its plural.

According to the Cambridge online dictionary, a doughnut is defined as “a small circular cake, fried in hot fat, either with a hole in the middle or filled with jam”.

The defendant is a Spanish competitor that traded under the brand “Yaya Maria” frozen pastry rolls with a hole in the middle. The packaging of the said products included slogans (in Spanish) such as “Here’s the freshest doughnuts” and “Always fresh doughnuts”, among others.

PANRICO, S.L. sued its competitor on the grounds of trade mark infringement as it considered that the mention to the word "doughnut" in the packaging of its competitors' pastry rolls amounted to trade mark infringement. The defendant opposed, arguing:

(i) the fair use exception for descriptive use (Art. 37 of the Spanish Trade Mark Act) according to which a trade mark owner may not prohibit use of the trade mark when it is needed to provide information relating to the type of goods, provided that such use complies with fair industrial or commercial practices, and

(ii) cancellation of the claimant’s trade marks for three different and cumulative grounds: lack of distinctive character, lack of use and dilution.

The main issue in discussion was whether the claimant’s trade marks DONUT, DONUTS and DOGHNUTS were distinctive in Spain for designating the pastry rolls at stake. If so, the claimant's trade marks would have been cancelled, and the infringement action dismissed. The Court said the defendant succeeded in demonstrating that “doughnut” is the generic English word for designating bready round pastry rolls, but it then found that this did not necessarily mean the that word “doughnut” and the registered trade marks (which reproduced how the English word is pronounced in Spanish) are also generic in Spanish.

The court based its statement in the fact that neither the word “doughnut”, nor DONUT, DONUTS and “DOGHNUTS” can be found in the dictionary of the Royal Academy of the Spanish Language (official source), and not even in its online version which is daily updated to include the last lexical trends. Such words are also absent from the most heavily-used dictionaries (like the “Maria Moliner” dictionary). The Court also found especially interesting a demoscopic survey produced by the claimant that proved that only the 6% of the total 516 people interviewed related the word “doughnut” (as written in English) with the specific bread roll that it marketed.

This led the Court to conclude that “doughnut” (English word) and thus DONUT, DONUTS and DOGHNUTS are “fancy” or “fantasy” trade marks and hence distinctive. The Court followed by allowing the claim on the grounds of trade mark infringement as it found there was relevant similarity and risk of confusion between the claimant’s trade marks and the word "doughnut" as used by the defendant.

The defendant was ordered to cease the use of the word “doughnut”, to publish the judgment in a national journal at its expense, to pay PANRICO, SL Euro 33,700 plus a daily fine of Euro 600 until the Judgment is fully enforced and to bear the Court costs of the appeal.

Posted by: Ignacio Marques @ 05.49
Tags: foreign words., Spain, trade mark infringement,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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