(Photo and Copyright Jim Chadwick 2010. All Rights Reserved. Used here with permission. Thanks Jim!)
A friend of mine recently returned from Barcelona, Spain and took the photo above of a DUNKIN COFFEE sign, as opposed to what we see here in the U.S., namely, DUNKIN DONUTS. Turns out it's a trademark issue. Here is some research I've done on this issue. Long story short, there is a 40 plus year old trademark registration in Spain for DONUT and similar marks owned by a Big Spanish Bakery named Panrico. Apparently, Donut is not as yet recognized as generic in Spain since this is an English term in a Spanish speaking country. But the DONUT trademark registration in Spain may be on its way out with inroads being made by KRISPY KREME DOUGHNUTS. Scintilling, eh...?!... Fortunately, here in the United States the term DONUT is generic and open to use by all for donuts... and thankfully so for all of us who love donuts.
In Spain, though, Panrico has had a stranglehold over DONUT as a trademark for some 40 years. No such issue exists in Germany, however. Note the three photos below which I took in Berlin in May 2008.
In any event, here is what my research turned up:
Date: May 17, 2010
Re: DUNKIN COFFEE Trademark Issue in Spain; Research Results
1. Spain: Dunkin' Donuts Changes Name to Dunkin' Coffee
http://www.flex-news-food.com/console/PageViewer.aspx?page=11016&str=DUNKIN%20and%20COFFEE
2. SPAIN: Panrico defends ‘Donuts’ trademark, June 11, 2007
http://www.just-food.com/news/panrico-defends-donuts-trademark_id98754.aspx
3. Article 1: No Holes in Donut Monopoly. July 2008
http://www.dyoung.com/trademarknewsletter-jul08
4. PANRICO donuts
http://www.brandsoftheworld.com/logo/panrico-donuts
5. "Mmmmmmmmm, Donuts... the difficulties of successful brand translation in a global market." By Bill Ladas, October 2007.
http://www.davenportlyons.com/legal-services/articles/531/#foot
comment: This article above by Bill Ladas is excellent!
6. Current Status of Krispy Kreme Doughnuts trademarks before the European Community Trademark Office (OHIM):
a. Class #21 trademarks for glassware (Housewares and glass, namely, mugs and coffee cups) is now Registered!
See: http://oami.europa.eu/CTMOnline/RequestManager/en_DetailCTM_NoReg
Date of Registration: May 28, 2008
Registration No.: 006179808
Trade mark name: Krispy Kreme DOUGHNUTS (figurative)
note: Krispy Kreme does own an additional Registration in 3 classes in the European Community (CTM) for its mark/logo above for:
Class #25: Clothing, t-shirts, hats, sweatshirts, scarves.
Class #30: Doughnuts, pies, cakes, buns, bagels, coffee.
Class #42: Restaurant services, specialized in the provision of doughnuts, pies, cakes, buns, bagels.
This Registration above, however, is subject to an ongoing Cancellation Action before OHIM by Panrico of Spain! FYI re said Cancellation:
Cancellation No: 000002683
Type of cancellation request: Cancellation based on invalidity
Date of filing of cancellation application: 30/01/2008
Name of applicant for cancellation: PANRICO S.L.
ID Nº of applicant for cancellation: 278854
Nationality of applicant for cancellation:
ES Representative's name: CURELL SUÑOL Representative's ID No: 10682
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Fortunately, as we said before, no such issue exists regarding the term DONUT in the U.S. and thankfully so or we might not be able to show these photos below...
That's all folks... for now.
William E. Maguire
Law Offices of William E. Maguire
Los Angeles, CA
www.TrademarkEsq.com
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