The Nespresso capsules : end of trademark protection for Nestlé ?

Nespresso, one of the brands of company Nestlé, has established a strong market position with its coffee machines and compatible capsules. These capsules have been strongly protected by patents over the years.

Nestlé’s patents lapsed however in 2001, leaving golden opportunities for competitors to create their own compatible capsules.

Therefore, Nespresso applied for an international registration of the capsules as a three-dimensional trademark. This trademark, registered under No. 763699, has been renewed in the Benelux in 2011 for another 10 years until July 2021.

IR. No.763699

Although Nespresso still claimed protection for its capsules, many of its competitors started to create their own compatible capsules, which Nespresso tried to block by using its rights over the registered three-dimensional trademark. According to the De Tijd, it now seems that Nespresso will have to store its weapons. 

As De Tijd reports, one of the competitors, Mondelez-Kraft, brought a case before the Court of Commerce in Brussels on 19 November 2013, in order to annul the international trademark registration of Nespresso’s capsules, using the argument that “a sign shall not be registered as a trade mark if it consists exclusively of the shape of goods which is necessary to obtain a technical result”.

The Brussels’ Court of Commerce followed Mondelez-Kraft’s opinion and annulled Nestlé’s trademark protection over its capsules by decision of 24 March 2014.

The reasoning was based on general Case law of the European Court of Justice, which states that “the main purpose of the prohibition on registration as a trademark of any sign consisting of the shape of goods which is necessary to obtain a technical result is to prevent trade mark law granting an undertaking a monopoly on technical solutions or functional characteristics of a product”. This means that undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions.

Nestlé did not agree with this decision and filed an appeal. The Brussels’ court of appeal however now confirmed the first decision on 4 November 2016. This decision seem to have been closely kept under the radar until now.

Competitors will now, since Nestlé’s trademark protection has also been taken from its capsules, certainly grab the opportunity to create capsules which are compatible with the famous Nespresso machines.

“Nespresso. What else?” There is no doubt we will soon find out.