[Guest post] Mixing it up: Court of Rome invalidates Müller’s two-compartment yoghurt pot 3D trade mark

The IPKat has received and is pleased to host the following news item by Katfriend Edoardo Cesarini (GR Legal) regarding a recent first instance decision concerning the validity of a three-dimensional (3D) trade mark for a well-known yoghurt pot. Here’s what Edoardo writes:

Mixing it up: Court of Rome invalidates Müller’s two-compartment yoghurt pot 3D trade mark

by Edoardo Cesarini

The Court of First Instance of Rome recently rendered an intriguing decision (no. 11758/2026 of 30th July 2026) addressing the boundaries of 3D shape trade mark protection and technical functionality in the sector of fast-moving consumer goods (“FMCG”).

At the heart of the dispute was the quest of dairy giant Müller to defend its Italian 3D trade mark for its iconic two-compartment yoghurt pot:

Müller's yoghurt (photo by Edoardo Cesarini)

Background and facts

The case involved two important players in the Italian dairy market: the German company Müller and the Italian producer Mila.

In 2019, Müller filed an Italian 3D trade mark application for its square, two-compartment pot structure (a large section for yoghurt and a smaller triangular section for fruit and/or cereals, separated by a hinge to allow the ingredients to be mixed easily) which was granted by the Italian Trademark Office in 2020.

Müller's 3D mark

Mila claimed that Müller had started warning some of Mila’s mass retail clients that the two-compartment yoghurt pots supplied by Mila were unlawful as they infringed Müller’s 3D Italian registered trade mark.

As such, Mila decided to take action against the German company claiming the invalidity of the adverse trade mark pursuant to Art. 9(1)(b) of the Italian Industrial Property Code (which mirrors Art. 7(1)(e)(ii) of the EUTMR) on the grounds of lack of inherent distinctiveness (the shape had already become standard practice in the trade well before Müller filed its trade mark application) and it being exclusively of a shape which responded to specific technical needs regarding product preservation and consumption. Mila also added that it was the first company to introduce into the Italian market the two-compartment yoghurt pot as early as 1987, featuring a container split into two triangular sections.

Mila's yoghurt (photo by Edoardo Cesarini)

Müller, on its end, argued instead that its trade mark was fully valid as there were different alternative solutions on the market for mixing separate food ingredients, thus confirming that the shape of its registered trade mark was not necessary to obtain such technical result. Moreover, the German company underlined that its yoghurt pot had also acquired massive market recognition (so-called secondary meaning) after decades of commercialisation, also submitting consumer survey evidence to prove that consumers associated the two-compartment pot with Müller.

Decision

Relying on the above-mentioned Art. 9(1)(b) of the Italian Industrial Property Code and established CJEU case-law (e.g., Case C-299/99 Philips and Case C-48/09 Lego), the Court of Rome ruled that the shape of Müller’s trade mark is entirely driven by technical and functional requirements.

Kat-yoghurt
(not discussed in the Rome decision)

More specifically, the Court observed that structuring the pot into two separate compartments represents the technical solution necessary to keep the yoghurt and the solid ingredient (cereals, fruit, etc.) separated in order to preserve their respective properties until consumption, while also facilitating their mixing.

On that note, the Court of Rome emphasized that the existence of alternative shapes achieving the same technical result does not save the trade mark from invalidity. The purpose of Art. 9(1)(b) of the Italian Industrial Property Code is indeed to prevent the granting of exclusive rights over functional characteristics of a product, which would hinder fair competition.

Finally, the Court concluded that, since two-compartment pots are quite standardized in the dairy sector, the shape lacks inherent distinctiveness, which cannot even be acquired through use.

As such, the decision invalidated Müller's 3D Italian trade mark no. 302019000031937, dismissed the counterclaims of the German company for trade mark infringement and unfair competition and also issued an injunction (backed by a penalty of € 2,500 for each infringement) prohibiting Müller from threatening Mila and its mass retail clients with legal action based on the now invalid trade mark.

Comment

The judgment of the Court of Rome is consistent with the rather strict Italian and EU case law on the functionality absolute ground and it reaffirms a crucial principle: trade mark registration cannot be leveraged to obtain a perpetual monopoly over technical solutions. Furthermore, the ruling confirms that a functional shape can never be ‘saved’ by its distinctiveness, whether inherent or acquired through use.