September 21, 2021
The shape of the Nespresso pods cannot be a protected trademark, the highest judicial body in Switzerland said on Tuesday, ending a very long soap opera at the initiative of the agri-food giant Nestlé.
The federal court ruled that necessity is law and that a shape cannot be registered as a trademark if it has to be taken over by a competitor who wishes to market a similar product.
“We are surprised and disappointed with the decision of the Federal Court. However, we accept this decision and will continue to focus on offering innovative high quality products to all of our customers”, commented Nespresso, interviewed by AFP .
In September 2011, Nestlé and Nespresso took legal action in the canton of Vaud, where its headquarters are located, in order to ban the sale of capsules from the company Ethical Coffee.
The latter – which went bankrupt in 2018 – had developed a capsule similar in shape to the original from Nespresso and compatible with the brand’s machines but made not of aluminum but of plant fibers and biodegradable starch. . These capsules were sold in France and Switzerland from the beginning of the 2010s.
The Vaudois courts had rejected the request for prohibition and found the invalidity of the distinctive mark granted by the Federal Institute of Intellectual Property (IPI).
Trademark law allowed Nespresso to renew protection indefinitely every 10 years.
But Nestlé, dissatisfied with the decision of the Vaud court, appealed to the federal court.
In its very detailed decree where there are many technical drawings of real or fictitious pods and photos of competing containers but also considerations of what makes the quality of a coffee, the federal court considers that the external dimensions, the The angles of the conical parts, the flange at the base and the coffee capacity have been developed in order to guarantee optimal functioning in the Nespresso capsule compartment.
Insofar as competitors have to come to terms with these parameters, they do not have much room for maneuver, considers the Court, which emphasizes that the alternative capsules also have a shape very similar to those of Nespresso, from which they differ. by niches or stripes, for example, and a notoriety study showed that they did not differ in the minds of consumers.