When can 3D shapes be registered as trade marks?

In the 1970s, Nestlé developed the “Nespresso” coffee machine and a coffee capsule to go with it. The company obtained several patents for various aspects of the machine and the capsule (all of which are now expired).

In 2000, Nestlé also registered the 3D shape of the coffee capsule as a trade mark. 3D shapes are usually difficult to register as trade marks (because consumers aren’t accustomed to identifying 3D shapes as brand identifiers in the same way that they are accustomed to identifying brand names, logos and slogans as brand identifiers). However, in this case, the Swiss Trademark Office was satisfied that the 3D shape of the coffee capsule had acquired a distinctive character and therefore could be registered as a trade mark.

In 2011, a competitor of Nestlé’s, Ethical Coffee Company, developed a biodegradable coffee capsule which was compatible with the Nespresso machine, but Nestlé sought a court order to prevent Ethical Coffee Company from selling its capsule on the basis that it infringed the trade mark for the 3D shape of the Nespresso coffee capsule. In response, Ethical Coffee Company sought to invalidate the trade mark arguing that it should never have been granted in the first place.

The Swiss Supreme Court ultimately agreed with Ethical Coffee Company the trade mark for the 3D shape of the Nespresso coffee capsule was invalid because the shape of the capsule was “technically necessary” to be used in a Nespresso machine (which also mean that whether or not the 3D shape of the coffee capsule had in fact acquired a distinctive character was irrelevant).

Briffa comment

It is well-established in UK and EU trade mark law that trade marks consisting of 3D shapes that are necessary to achieve a technical result cannot be registered as trade marks (there have been similar cases in the EU courts involving the shape of a three-headed rotary electric shaver developed by Philips, as well as the shape of a toy brick developed by Lego).

However, in this case it appears that the Swiss Supreme Court was particularly concerned that the trade mark law should facilitate perpetual protection for technical solution, long after the patents for those technical solutions have expired (trade marks, which protect brand assets, can last forever; whereas patents, which protect technical inventions, generally last for no more than 20 years).

Businesses seeking to maximise their IP protection should certainly identify all potentially IP assets in the business (including all brand assets and brand identifiers that may be protectable as trade marks). However, where any aspect of a trade mark (and its 3D shape in particular) is technically necessary, it is possible that the trade will be vulnerable to invalidation or that it will not be registrable in the first place. In such circumstances, it may be more appropriate to investigate registered patent or registered design protection.

Briffa are experts in all aspects of intellectual property law and practice, including contentious and non-contentious matters. If you would like to arrange a consultation with one of our specialist IP solicitors, please contact us on info@briffa.com or 020 7096 2779.

Written by Éamon Chawke, Partner