Trademark practitioners have long championed the pursuit and cultivation of strong brands – signs capable of distinguishing the commercial origin of goods and services with clarity, force, and economic value. The conventional wisdom in the field is almost axiomatic: businesses should select trademarks that are:
Inherently distinctive;
Conceptually remote from the characteristics of the goods they designate; and
Sufficiently idiosyncratic to resist comparison with competitors.
Yet there is a paradox at the heart of commercial success. As a brand becomes stronger and more widespread, it may also become more vulnerable to losing distinctiveness. When consumers begin using a trademark as a generic term for a product rather than as an indicator of origin, its very success can create legal risk. This phenomenon, known as genericide, reflects a counter-intuitive reality.
Jurisdictions across the EU have attempted to balance linguistic reality with legal principle, and the recent decision of the Spanish Supreme Court in the Donut case illustrates the continued relevance, and complexity, of this balancing exercise.
The litigation pitted Bakery Donuts Iberia S.A.U., proprietor of the long-standing and renowned ‘Donut’/’Donuts’ trademarks, against Atlanta Restauración Temática S.L., which had referred to its own ring-shaped pastry products as “donut” on its website. Earlier judicial instances in Spain had accepted that the term had acquired a descriptive character in ordinary language and therefore could be used by third parties, particularly after the Real Academia Española, a Spanish royal institution that aims to ensure the stability of the Spanish language, incorporated dónut into its dictionary as the generic name for a type of pastry.
However, the Spanish Supreme Court took a markedly different approach. While acknowledging the linguistic reality of the term’s widespread use, the court held that lexicalisation does not extinguish trademark rights, particularly where the mark enjoys a reputation. Crucially, the court emphasised that the dictionary entry itself noted the proprietary origin of the term, thereby defeating the argument that “Donut” had undergone legal vulgarisation. The court also underscored that even if a sign is used descriptively, such use must remain in accordance with honest practices in industrial or commercial matters, a requirement Atlanta failed to meet.
The Portuguese legal framework: renowned marks and the threshold for genericide
Portuguese trademark law is built upon the foundational principle that distinctiveness is both the entry point and the anchor of trademark protection. Under the Industrial Property Code (CPI), a mark may be refused registration, or later revoked, when it loses the ability to distinguish the goods or services of one undertaking from another. This erosion of distinctiveness forms the statutory basis for what EU case law describes as “genericide”.
Article 268(2)(a) of the CPI expressly provides that a trademark shall be subject to revocation if, due to acts or omissions of the proprietor, it “has become the common name in the trade for a product or service”.
This standard becomes particularly relevant when examining Portuguese practice involving the ‘Donut’ and ‘Donuts’ trademarks. In recent years, the Portuguese Industrial Property Office (INPI) and the courts have been faced with disputes concerning signs that incorporate variations of the word “doughnut”, raising questions about whether the term’s colloquial usage in Portugal has any bearing on the distinctiveness or enforceability of the earlier marks.
Portuguese jurisprudence and administrative decisions
The following cases are particularly relevant to understanding how Portuguese courts and the INPI have treated the ‘Donut’ and ‘Donuts’ trademarks.
Infringing mark: ‘Planet Doughnuts’
Year: 2008
Case No.: 38/04.9TYLSB (Lisbon Commercial Court)
Outcome: Registration refused on appeal. The court found imitation and a risk of association with ‘Donuts’.
Key point: Visual and phonetic similarity (“doughnuts” versus “donuts”).
Genericness discussed? No. The court treated ‘Donuts’ as distinctive, with no suggestion of vulgarisation.
Infringing mark: ‘Barbells N’ Donuts’
Year: 2015
Case No.: Portuguese trademark No. 538795
Outcome: Refused. Original grant revoked under Article 23 of the CPI. The INPI found imitation and unfair advantage had been taken of the reputation of ‘Donuts’.
Key point: The INPI expressly recognised ‘Donuts’ as a notorious/reputed mark (extensive evidence: market studies, ads, sales data). Risk of association and dilution accepted despite no product similarity.
Genericness discussed? No. The INPI treated ‘Donuts’ as highly distinctive and reputed, and even warned that the infringing mark could contribute to vulgarisation, meaning the office rejected any suggestion that the term “donut(s)” was already generic.
Infringing mark: ‘Doughnuts’ (word mark)
Year: 2020
Case No.: Portuguese trademark No. 614263 (INPI – re-examination)
Outcome: Refused. The INPI held the sign to be purely generic/descriptive, and incapable of functioning as a trademark under Article 209(1)(c) of the CPI.
Key point: “Doughnuts” is considered a term extremely usual in commerce to designate a type of pastry. In the absence of any distinctive elements, refusal was based on absolute grounds, not in conflict with ‘Donuts’.
Genericness discussed? Yes, but only regarding the applied-for mark. The INPI stated that “doughnuts” is a generic culinary term and cannot be monopolised. The decision does not suggest that ‘Donuts’ (the existing earlier mark) has become generic.
Infringing mark: ‘Berlim & Donuts’
Year: 2021
Case No.: Portuguese trademark No. 649909 (INPI – examination)
Outcome: Refused. The INPI held that the mark constituted imitation of the reputed ‘Donuts’ marks, with a risk of confusion, association, and unfair advantage.
Key point: Evidence of the notoriety and prestige of ‘Donuts’ repeated extensively. The shared element “Donuts” created strong graphic and phonetic similarity.
Genericness discussed? Raised by the applicant, rejected by the INPI. The applicant argued that “donuts” is an extremely usual culinary term, hence generic. The INPI rejected the argument, reaffirming ‘Donuts’ as a distinctive, reputed mark with ongoing advertising and market recognition.
Infringing mark: ‘Go Donut!’
Year: 2022
Case No.: Portuguese trademark No. 685173 (INPI)
Outcome: Refused. The INPI found strong graphic, phonetic, and conceptual similarity with ‘Donuts’ and ‘Oh My Donuts’.
Key point: Repeated recognition of ‘Donuts’ as a mark of notoriety and prestige in Portugal. The INPI stresses that the expression “Donuts” is “spontaneously, immediately and generally known” to the public and associated with the claimant.
Genericness discussed? Yes, briefly. The INPI rejected any argument of genericness, stating explicitly that even if a term becomes colloquially generic, the trademark retains protection if it continues to indicate origin, which ‘Donuts’ still does.
Infringing mark: ‘Donuts Zone’
Year: 2023
Case No.: Provisional refusal – IR 1702213 (INPI)
Outcome: Protection in Portugal provisionally refused; opposition upheld by Bimbo Donuts Iberia. The INPI identified imitation, risk of confusion/association, and unfair advantage.
Key point: “Donuts” appears as the dominant element. The INPI emphasises identical/affine goods in classes 30, 35, and 43, and repeats extensive earlier recognitions of ‘Donuts’. The figurative “Zone” element is insufficient to differentiate.
Genericness discussed? No argument rejected implicitly. The INPI stressed that ‘Donuts’ remains distinctive and reputed, and notes prior decisions confirming that consumers “easily identify the term ‘Donuts’ and associate it with the claimant’s products”.
Key takeaways
In sum, the Spanish Supreme Court’s decision on October 28 2025 confirms that ‘Donuts’ remains a protected trademark and cannot be freely used by competitors, despite its everyday linguistic use. Colloquial adoption of the term “donut” does not strip the mark of its distinctiveness, as consumers continue to associate “Donuts” with a specific commercial origin.
This approach aligns with Portuguese practice, where the ‘Donuts’ mark is likewise considered reputed and distinctive, and claims of genericness are consistently rejected. In both jurisdictions, popularity in language does not justify weakening trademark protection.
