United States: U.S. Krispy Kreme Doughnuts Win 4-0 Over Spanish Donuts

Last Updated: March 29 2017
Article by Catherine Muyl

A decision rendered by the European Court of Justice (ECJ) on March 2, 2017, affirming a General Court ruling and potentially ending a nearly twenty-year legal battle, is a reminder to trademark owners that what is generic in one territory can be distinctive in another.

Doughnuts are well-known in the U.S. but, until recently, they were far less known in Europe. In 1962, a Spanish company called Donut Corporation Española (which later became Panrico SA, now a subsidiary of the Mexican Bimbo group) filed to register the DONUT trademark in Spain and developed a whole family range of pastries, which became quite popular. In 1988, they also filed to register in Spain the mark DOGHNUTS (not the correct English spelling; in the U.S., the pastry is of course referred to as a "donut" or "doughnut").

The Krispy Kreme Application and Opposition

On September 6, 1999, HDN Development Corp., parent company of the U.S. Krispy Kreme Doughnuts chain, filed a European Community trademark application for the word and design mark: KRISPY KREME DOUGHNUTS, which is a well-known mark in the U.S.

Krispy Kreme declared that it was not seeking to acquire any rights in the word "doughnuts" alone. Nevertheless, Panrico filed an opposition based on its prior Spanish DONUT and DOGHNUTS trademarks. Panrico's opposition was rejected on January 27, 2005, on the ground that there was no risk of confusion. That decision was confirmed by the First Board of Appeal. Panrico filed and later withdrew a further appeal, and the KRISPY KREME DOUGHNUTS mark was registered.

The Cancellation Action

Panrico then tried a different strategy, and filed a request to cancel the now-registered KRISPY KREME DOUGHNUTS mark. Panrico's cancellation request was based on the same two trademarks it had relied upon in the opposition, as well as a few additional trademarks, including an international DONUT word mark registered on April 30, 1969, and covering a number of European countries, including Portugal. Panrico argued that there was a risk of confusion between the trademarks, and that the KRISPY KREME DOUGHNUTS trademark would unduly benefit from the distinctive character and reputation of the DONUT and DOGHNUTS trademarks.

Krispy Kreme raised a res judicata defense and argued that, since the earlier opposition proceeding resulted in a ruling that there was no risk of confusion between the trademarks, Panrico could not raise that same argument again in the cancellation proceedings. This argument was rejected on the grounds that proceedings before the European Trademark Office are administrative in nature, not judicial, and that the res judicata rule applies only when one party has obtained a final court decision.

Krispy Kreme also failed to make the case that the "DONUT" and "DOGHNUTS" trademarks lacked distinctiveness, because the General Court had already held in an earlier case, Bimbo v. OHIM, that these trademarks were not devoid of distinctiveness.

Nevertheless, Krispy Kreme prevailed on the merits and Panrico's request for cancellation was rejected. The decision was confirmed by the Fourth Board of Appeal on July 25, 2013, and by the General Court on October 7, 2015.

Was there a risk of confusion?

The General Court compared the trademarks in question from three perspectives: visual, conceptual and phonetic. From a visual perspective, the Court noted that the marks had different appearances because the words "KRISPY KREME" appeared first and in bigger letters, and were thus more prominent than "DOUGHNUTS," the only word similar to Panrico's marks.

As to the conceptual perspective, since the words "doughnuts", "donut" and "donuts" do not belong to the common Spanish vocabulary, the Court held that Spaniards would not associate them with a particular concept, and it was therefore not possible to compare the trademarks from a conceptual point of view.

Finally, the Court considered phonetics. The Court found that it was not possible to determine with certainty how the word "doughnuts" is pronounced by the relevant public because the combination of letters "gh" is unknown in Spanish and "ou" is uncommon. As a consequence, it is not possible to predict with certainty how Spanish consumers will pronounce "doughnuts" but at least a portion will pronounce it differently from "donuts".

The General Court also found that, at least in certain respects, the goods were not similar. Panrico's trademarks covered various pastry products in class 30, whereas Krispy Kreme's trademark also covered "restaurant services specialized in doughnuts, tarts, cakes, brioches, bagels" in class 42. Panrico argued that these class 42 services were similar to its products, but the General Court disagreed. Panrico also argued that, pursuant to article 8 paragraph 5 of the 40/94 Regulation, trademarks that have developed a certain reputation should be given broader protection to cover non identical products and/or services. However, the Court found this regulation inapplicable because of the lack of similarity between the marks.

The General Court concluded that, taking into account all relevant factors, there was no risk of confusion, and the KRISPY KREME DOUGHNUTS mark was valid.

The ECJ Appeal

Panrico pursued a further appeal to the ECJ, but this appeal was rejected by the ECJ on March 2, 2017. The ECJ decision is a useful illustration of that Court's role. The ECJ does not review findings of fact unless a gross error is alleged, which was not the case here. As a consequence, the findings of the lower court as to the similarity between the trademarks, as well as findings regarding the nature of the products and services, could not be challenged.

The ECJ decides only whether the General Court has correctly applied the law and, in this case, the ECJ found no fault in the General Court's application. Panrico argued that the General Court failed to take into account the reputation of its trademarks and the fact that some of the products and services covered by Krispy Kreme's trademark belonged to the very same class (class 30) as those covered by Panrico's trademarks. However, the ECJ found that the General Court had, in fact, taken these factors into account.

This is the end of a long battle: Krispy Kreme has a strong and valuable trademark in the U.S., but it took them eight years to obtain the registration of a European Union Trademark, and then another ten years to obtain a final decision confirming its validity. But it was certainly worth it: after all, they did not end up with " donuts"!

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
25 Oct 2017, Webinar, Boston, United States

Foley Hoag will present a 60-minute webinar on Wednesday, October 25 at 12:30 pm EDT, offering guidance for in-house counsel regarding the basics of trademark and design protection in the European Union. Attendees will learn about the opportunities and pitfalls to be on the lookout for when looking to secure, protect, and enforce an IP portfolio overseas.

1 Nov 2017, Webinar, Boston, United States

Please join Foley Hoag on Wednesday, November 1, 2017 for a webinar that covers the details of drafting an appropriate arbitration clause for your company’s commercial contracts.

9 Nov 2017, Conference, Waltham, United States

Please join us on Thursday, November 9 at the Westin Waltham Hotel for our quarterly New England M&A Forum, which brings the latest in market trends and recent legal developments to the New England M&A professionals' community.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.