SWISS MARK NESPRESSO CAPSULES DELETED

The Swiss Federal Supreme Court confirms cancellation of the shape mark for Nespresso capsules. It was absolutely impossible to register a technically necessary shape, even if it had become established as a trade mark in the market.

The trademark dispute over the well-known Nespresso capsules from Nestlé (Switzerland) has been going on for years, including in Germany. Nestlé had already registered the shape of the Nespresso capsule as a Swiss trade mark in 2000 (number 486 889) and extended this Nespresso trade mark protection internationally (IR trade mark) via the Madrid System of the World Intellectual Property Organization (WIPO), including in EU member states. However, Nestlé was unable to obtain protection as an EU trademark; the EUIPO refused to register the trademark in April 2002 on the grounds that the shape had not acquired distinctive character.

In Germany, however, the trademark registration was accepted, and Nespresso capsules have been protected in Germany since April 2003. But, in summer 2014 the German Patent and Trademark Office (DPMA) decided to cancel the trademark protection for Germany. Since then, Nestlé has been fighting a legal battle in Germany against the Swiss Ethical Coffee Company, but so far in vain. The Federal Patent Court ruled in 2017 that the Nespresso capsules lose trademark protection in Germany. Nespresso capsules were a packaging container with a design only for technical reasons. The Packaging is to be equated with the shape of the goods.

The cancellation request had been filed by Ethical Coffee Company (Switzerland), which developed a biodegradable coffee capsule with a similar shape that is compatible with Nespresso machines. As a result, Nestlé had filed a lawsuit against Ethical Coffee, in Germany – and likewise in Switzerland.

Source: https://legal-patent.com/trademark-law/swiss-mark-nespresso-capsules-deleted/