Technical solution

It is possible to get exclusive trademark rights for the 3D-shape of a product. Just look at the Coca-Cola bottle or the shape of the Toblerone bar: both protected as a shape mark. However, the law does have a strict rule for registration of shape marks. If the shape you want to protect is necessary for a technical solution, then trademark protection is ruled out. The shape of the Nespresso capsule is technically necessary because the shape is essential for use of the capsule in a Nespresso machine. And so the shape does not receive trademark protection. 

Trademark registration capsule: invalid because the shape is necessary for a technical solution


No eternal rights of technology

The idea behind this rule is to prevent an exclusive monopoly on a particular technical solution to one company forever. Over time, new technology must also be accessible to others, otherwise progress will be stalled. Rights to a trademark can be extended indefinitely and this offers the possibility of eternal protection. This is the reason you have to request patent law for the protection of technology and inventions. A patent protects for up to 20 years, after which time the technology is available to everyone.

The technique of the capsule was patent protected at one time 



At one point the technical aspects of the capsule were also once patent protected by Nestlé. However, when that registration expired after 20 years, Nestlé tried to extend its protection by registering the capsule as a 3D-shape mark. It’s a well-known trick: Lego tried a similar attempt (in vain) for its (technically necessary) Lego block.

The Lego block is also not protected as a shape mark: the shape is technically determined


Exit for capsule shape-mark

With the ruling of the Swiss court, Nestlé now loses its last hope, and has come to the end of the road with the company’s shape trademark claim. The highest German court already reached the same conclusion in 2017, and much longer ago, in 2004, the European Trademark Office also refused Nestlé’s shape mark (although the Trademark Office argued that the shape was not distinctive). Whatever the case may be, Nestlé can now focus on what they are good at, which is making great coffee.

Bas Kist