Nestle lost quite an important dispute in Switzerland regarding a figurative trademark for its famous Nespresso capsules.
Nestle registered a figurative trademark for its coffee capsule for the first time in Switzerland in 2000. After this an attempt for registration of equal EU trademark failed on absolute grounds.
Nevertheless the company succeeded to register this mark in Germany too.
Everything was fine until another Swiss company Ethical Coffee Company, started to offer biodegradable coffee capsules with a similar shape to this of Nespresso that fits to Nestle’s coffee machines.
Because of this Nestle attacked its competitors with trademark infringement lawsuits in Germany and Switzerland.
As a counter attack Ethical Coffee Company successfully canceled Nestle’s German mark, a decision upheld by the The Federal Patent Court in 2017. The ground for this cancelation was the fact that the form of the coffee capsule performs technical functions.
In Switzerland, the Court canceled the mark finding that Nestle failed to prove that the form is perceived as a source of trade origin.
The decision was appealed but the Supreme Court upheld it adding additional grounds for the cancelation. According to the Court, the mark has technical aspects. One of the reasons for this conclusion is the fact that Nestle’s competitors have to abide by this particular form in order their capsules to fit the coffee machines. These capsules has a specific form that is necessary in order the coffee machine to use it and to make a coffee successfully.
This case illustrate how difficult protection of figurative trademark can be especially when such trademarks are related to machines.