11 November 2021 Marchi Miriam Mangieri

J-cases-910x512ENG nespresso

Swiss Supreme Court invalidated the Nespresso capsule 3D Mark registered by Nespresso SA in class 30 for coffee, coffee extracts and coffee-based preparations.

According to the Court this shape cannot be registered since it is necessary in order to reach a technical result.
The decision comes at the end of a complex dispute between Nestlé and Ethical Coffee SA, a competitor that launched a capsule compatible with the Nespresso system.

The case started in 2011 when Nestlé requested to the Tribunal a preliminary injunction in order to cease the commercialization and distribution of the capsules of Etichal Coffee, that were in violation of its 3D TM.
Etichal Coffe filed a counterclaim by requesting the cancellation of the three-dimensional TM of the Nespresso capsules.
The lawsuit lasted for many years, also because, in the meantime, Etichal Coffee declared bankruptcy. The final decision of the Cantonal Tribunal of Vaud declared the 3D shape of the Nespresso capsules of public domain and, therefore, ordered the cancellation of the Swiss no.486 889. The appeal filed by Nestlé before Swiss Supreme Court did not modify the outcome, but the decision was based on different arguments.

In its decision the Court considered the principles established in European Union in relation to the form that is technically necessary and recalled the decision of EU Court of Justice in the cases Lego C-48/09 e Philips C-299/99.
After many experts reports the Court declared the nullity of the TM since it was constituted by a shape necessary in order to reach a specific technical result that in the case at stake was the compatibility of the capsules with the Nespresso’s machines.

On the basis of the analysis conducted, indeed, the Tribunal concluded that the alternatives on the market have disadvantages compared with the original Nespresso capsule: higher production costs, smaller amount of coffee per capsule and an increased risk of getting stuck in the coffee machine.
Therefore, the Federal Supreme Court concluded that the shape of the 3D mark is technically necessary to be used in a Nespresso machine.

Thus, after the invalidation of the 3D TM of the Nespresso capsules in Germany, declared invalid in 2017, also in Switzerland Nestlé will have to renounce to the protection of the 3D shape of its capsules.