Germany: Bundespatentgericht annuls Nespresso capsule shape mark

IR 763 699

According to a press release from Friday, 8 December 2017, the German Federal Patent Court found Nestlé's German shape mark in the form of a "Nespresso" capsule invalid for coffee based on Article 3(2)(2) German Trade Mark Act, which corresponds to Article 4(1)(2)(ii) Trade Mark Directive ("signs which consist exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result". The German act lacks the "another characteristic", which was added by Directive (EU) 2015/2436). The German court found that the essential characteristics of the mark conformed to (the drawings of...) German patent DE 27 52 733 (with a priority of 1976) and were all essential to obtain a technical result.

Figs. from DE 27 52 733

The written grounds for the decision are not yet available. One remark comes to mind: it is too simplistic to look at the drawings of a patent to conclude that a form has a technical effect. The drawings only show an embodiment of an invention, which is defined by the claims. There may be other shapes that achieve the same purpose - which is irrelevant under the ECJ's test (EU:C:2002:377 - Philips/Remington) - but there may also be elements of the specific embodiment that are not strictly necessary to obtain a technical result. In the case at hand the claims of DE 27 52 733 describe a specific shape of the capsule ("a body having an acute-angled conical shape, the larger diameter defining at its end a flange"), but the domed top part ("hat")  of the capsule is not defined by claim 1 (it is claimed in a dependent claim). This led a Swiss court - where the alternative form test is applied also in trade mark law - to find that the overall shape of the Nespresso capsule was not necessary to obtain a technical result. The Swiss court, however, found that in the specific case, there was no legally relevant likelihood of confusion, because the only element of the shape that was not determined by technical necessity (the top or "hat") of the competitor's capsule was sufficiently distinct from the trade marked shape.

Shapes at issue in the Swiss case

Since the "alternative form" test is irrelevant under the ECJ's case law, the outcome of the case is hardly surprising, although the decision is likely to be appealed to the Federal Court of Justice given the stakes.

If the alternative form test was still alive in trade mark law, the case would raise the interesting question whether the interest to be compatible with the system of a market leader can justify a finding of technical necessity. There are other coffee-capsule-machines which use capsules that look different enough from the Nespresso-capsule as not to cause a likelihood of confusion (e.g., Lavazza's Aroma Point espresso capsules). Under the current interpretation of the law, this is irrelevant.