Nestlé’s appeal to protect the shape of Nespresso coffee capsules under trademark law was rejected by Switzerland’s highest court. They agreed with the previous court reasoning that the shape of the Nespresso capsules is ordinary and unmemorable. Furthermore, the court ruled that a trademark cannot protect a shape of a capsule if it must be used by competitors who wish to sell similar products.
The shape of Nespresso capsules was protected by a patent, valid until December 1996. The company requested the Federal Institute for Intellectual Property (IPI) to register the coffee capsule shape in June 2000, which IPI initially rejected due to the capsule shape being unmemorable and common.
After complaints, IPI gave in, and Nespresso’s coffee capsule shape was protected until May 2020.
However, a company called Ethical Coffee had been selling similarly shaped, Nespresso-compatible, coffee capsules in Switzerland and France since 2010.
The company went to court in 2011 in Vaud, Switzerland, to ban the sale of Ethical Coffee’s capsules, a move that was rejected by the court for the same reasoning as was earlier issued by the IPI.
The Vaud court based their decision on a survey that showed only 33% could identify the brand’s capsule in pictures.
Last week, the Federal Supreme Court also reached the same conclusion of rejecting the trademark. While the highest Swiss court agreed with previous court reasonings, they had other motivations.
A shape cannot be trademarked if it must be used by competitors who wish to market similar products. Because Nespresso capsules require an exact measurement — in terms of dimensions, angles, capacity and the collar at the bottom of the capsules — it provides little room for other forms by competitors.
Anecdotally, it feels as though the market for Nespresso compatible capsules is booming, as speciality roasters get in the game, delivering superior results than, in many cases, Nespresso’s own capsules. Had the company been able to re-establish the trademark, it would have killed a growing market for hundreds of small companies.
One argument used to support Nespresso’s position was to claim that the trademarking of the original capsule shape was “technically necessary”, but no technical necessity was proven.