Nespresso’s capsule is no more a trademark in Switzerland

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.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB


Nestle lost another battle against IMPOSSIBLE BURGER

Nestlé’s battle against IMPOSSIBLE BURGER has faced another fail recently. As this blog informed last year, the District Court in The Hague imposed a ban on Nestle to use its brand INCREDIBLE BURGER finding it similar to the early registered EU mark IMPOSSIBLE BYRGER. This mark is used by the US company Impossible Foods for burgers made of meat substitutes.

As part of its defense strategy Nestle initiated an invalidation proceeding against the earlier mark before the EUIPO. According to the company, this mark is not distinctive for the relevant goods that it covers. For Nestle, this marks means a burger that one thought could not possibly exist. What’s more the sign can be perceived as a promotional, laudatory message.

The EUIPO disagreed and dismissed the invalidation in its entirety. According to the Office the phrase IMPOSSIBLE BURGER is not directly descriptive for burgers, on the contrary it posses some negative connotations. It is suggestive trademark and from this point of view can be protected.

The Office considered that Impossible would not related to an impossible product as a quality or other characteristics but as a qualifier of a specific noun. The consumers can perceive this phrase as an amusing  catchwords or pun. Form that perspective the mark is not either a promotional or laudatory  slogan.

This case is a good example for the so-called suggestive trademarks. They have a meaning but it can be found out by consumers only as a result of mental process, not directly. These trademarks can be registered although sometimes this can be tricky.

Source: Loretta Dashorst – Novagraaf за Lexology.

Whether INCREDIBLE BURGER is similar to IMPOSSIBLE BURGER – Nestle faced some problems in the EU

The Court in Hague, Nederland, has issued a provisional pan-EU ban against a meat burger made of plant produced by Nestle, which uses the name INCREDIBLE BURGER.

The reason for this was a registered EU trademark for IMPOSSIBLE BURGER owned by the US startup company Impossible Burger that offers food products imitating meat.

Against this mark Nestle initiated a cancellation procedure before the EUIPO based on descriptiveness and lack of distinctiveness for the relevant products.

Meanwhile, the US company responded with a lawsuit in Nederland.

The Court came to a conclusion that the Nestle’s INCREDIBLE BURGER is similar enough to still registered EU trademark IMPOSSIBLE BURGER from a phonetic, visual and partly to a conceptual point of view.

The another thing that led the Court to consider a possible immigration of the IMPOSSIBLE BURGER mark was the fact that both companies were in licence negotiations which, however, failed. In the process of these negotiations Nestle acquired some confidential and sensitive information from the US startup regarding the mark and the product.

Nestle considers to change its product name to Sensational Burger in an attempt to distinguish it from INCREDIBLE BURGER.


Partial success for Cadbury over color trademarks dispute in the UK

night-photograph-starry-sky-night-sky-star-957040.jpegThe UKIPO has ruled in oppositions against the following trademark applications all for class 30, filed by Cadbury:

GB50000000003019362.jpg– № 3019361, with the following description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods.

GB50000000003019362.jpg– № 3019362, with the following description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods.

GB50000000003019362.jpg– № 3025822, with the following description: The colour purple (Pantone 2685C), shown on the form of application.

Against these applications Nestle filed oppositions with the following arguments:

  • The reference in the description to a Pantone number is a necessary but not
    sufficient condition for the Application to comply with Section 1(1);
  • The reference in the description to something “being shown on the form of
    application” does not comply with the requirement of being self-contained,
    intelligible and/or accessible. The application form does not form part of the
    public register and those consulting the public register are unable to ascertain
    from that the nature of the material referred to in the description.
  • The reference in the description to something being “applied to the packaging
    of the goods” imports a reference to a means of configuration or
    representation which is not shown on the register and which may comprise a
    potentially limitless number of signs/means of representation.
  • The reference in the description to “the whole visible surface” is inherently
    ambiguous because the public and competitors will assume – and the
    applicant intends – that less than the whole visible surface is in fact meant by
    the words “whole visible surface” since products of this kind must of necessity
    bear words, logos and other elements of different colours on the surface of
    the packaging.

The UKIPO agreed that in the case of trademarks 3019361 and 3025822 their descriptions create ambiguity regarding what exactly these signs represent.

Regarding trademark 3019362, however, the UKIPO considered that the above-mentioned conclusion is not relevant because the trademark’s description gives an idea of what exactly trademark dimensions are.

Source: WIPR.

KitKat case makes even harder proving acquired distinctiveness in the EU

photo-1505664194779-8beaceb93744The European Court has issued a very important and long-awaited decision on joint cases C‑84/17 P, C‑85/17 P и C‑95/17 P, Société des produits Nestlé SA v Mondelez UK Holdings & Services Ltd.

In a nutshell, these cases concern an invalidity proceeding against the following Nestle’s three-dimensional trademark for a chocolate bar:


The ground for this invalidation was a lack of distinctiveness. Nestle submitted various pieces of evidence for different EU member States with exception to Belgium, Ireland, Greece, and Portugal.

Initially, the EUIPO ruled that the mark has a proven acquired distinctiveness. The General Court, however, annulled this decision stating that such acquired distinctiveness has to cover all Member States.

The ECJ took the following position:

It follows that, with regard to a mark that is, ab initio, devoid of distinctive character across all Member States, such a mark can be registered pursuant to that provision only if it is proved that it has acquired distinctive character through use throughout the territory of the European Union (see, to that effect, judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraphs 61 and 63).

Admittedly, in paragraph 62 of the judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM (C‑98/11 P, EU:C:2012:307), invoked by Nestlé and EUIPO, the Court did find that even if it is true that the acquisition by a mark of distinctive character through use must be proved for the part of the European Union in which that mark did not, ab initio, have such character, it would be unreasonable to require proof of such acquisition for each individual Member State.

However, contrary to what is argued by Nestlé and EUIPO, it does not follow from that finding that, where a mark is devoid of inherent distinctive character throughout the European Union, it is sufficient, in order for it to be registered as an EU trade mark pursuant to Article 7(3) of Regulation No 207/2009, to prove that it has acquired distinctive character through use in a significant part of the European Union, even though such evidence has not been provided in respect of every Member State.

In that regard, it must be pointed out that there is a distinction between, first, the facts to be proved, namely the acquisition of distinctive character through use by a sign that is devoid of inherent distinctive character, and, second, the means of proving such facts.

No provision of Regulation No 207/2009 requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State. Therefore, it is not inconceivable that the evidence provided to establish that a particular sign has acquired distinctive character through use is relevant with regard to several Member States, or even to the whole of the European Union.

In particular, as the Advocate General stated, in essence, in point 78 of his Opinion, it is possible that, for certain goods or services, the economic operators have grouped several Member States together in the same distribution network and have treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all Member States concerned.

The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has a sufficient knowledge of the products and services that are present on the national market of the second.

It follows from those findings that, although it is not necessary, for the purposes of registering, on the basis of Article 7(3) of Regulation No 207/2009, a mark that is, ab initio, devoid of distinctive character throughout all the Member States of the European Union, that evidence be submitted, in respect of each individual Member State, of the acquisition by that mark of distinctive character through use, the evidence submitted must be capable of establishing such acquisition throughout the Member States of the European Union.

That said, the question of whether the evidence submitted is sufficient to prove a particular sign’s acquisition through use of distinctive character in the part of the territory of the European Union in which that sign did not, ab initio, have distinctive character is a matter of the assessment of evidence, for which the bodies of EUIPO are primarily responsible.

Such an assessment is subject to the scrutiny of the General Court, which, where an action is brought before it against a decision of a Board of Appeal, has exclusive jurisdiction to find the facts and, therefore, to appraise them. However, that assessment of the facts does not, save where the evidence has been distorted by the General Court, constitute a point of law which is subject, as such, to review by the Court of Justice in an appeal (judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 22 and case-law cited).

Nevertheless, if the bodies of EUIPO or the General Court, after having assessed all of the evidence that has been submitted to them, find that some of that evidence is sufficient to prove the acquisition by a particular sign of distinctive character through use in the part of the European Union in which it is, ab initio, devoid of distinctive character and therefore to justify its registration as an EU trade mark, they must clearly state that that is the case in their respective decisions.

In the present case, first, it follows from the findings above that the General Court did not err in law when it found, in paragraph 139 of the judgment under appeal, that, for the purposes of applying Article 7(3) of Regulation No 207/2009, in the case of a mark that does not have inherent distinctive character throughout the European Union, the distinctive character acquired through use of that mark must be shown throughout that territory, and not only in a substantial part or the majority of the territory of the European Union, and consequently, although such proof may be produced globally for all the Member States concerned or separately for different Member States or groups of Member States, it is not, however, sufficient that the party with the burden of providing such evidence merely produces evidence of such acquisition that does not cover part of the European Union, even a part consisting of only one Member State.

Second, in light of those same findings, the General Court was right to hold, in paragraphs 170 to 178 of the judgment under appeal, that the decision at issue was vitiated by an error in law, in so far as the Board of Appeal found that the mark at issue had acquired distinctive character through use, thereby justifying the application to that mark of Article 7(3) of Regulation No 207/2009, without adjudicating on whether that mark had acquired such distinctive character in Belgium, Ireland, Greece and Portugal.

In brief, this decision will make much more difficult proving acquired distinctiveness across the EU at least because it will require such an evidence to cover the whole EU territory not only a substantial part of it.

Image: Giammarco Boscaro on Unsplash.