Is the Nespresso capsule protected as a shape mark?

A daily act for millions of Belgians: insert a coffee capsule into a machine and enjoy a fresh espresso. Nespresso's iconic, bell-shaped capsule is recognizable worldwide. But can the shape of this capsule, so closely linked to its function, also be protected as a trademark? This question was at the center of a protracted legal battle between Nestlé, the manufacturer of Nespresso, and competitor Mondelez. In a judgment of July 3, 2025 the Brussels Court of Appeal has tied the knot and upheld the invalidity of the Nespresso trademark.

As a law firm specializing in intellectual property we follow such rulings closely. This judgment is a textbook example of the complex delineation between the trademark law and the patent law and offers important lessons for any company marketing a product with a unique shape.

The facts: the long battle for the coffee capsule

The saga begins in the 1970s, when Nestlé develops a revolutionary system: an aluminum capsule containing a dose of ground coffee that, in a specially designed machine, produces a perfect espresso. To protect this invention, Nestlé initially uses the patent law, giving it a monopoly on the technology for a limited period of time. Several European and Swiss patents have been filed over the years to protect the technical aspects of the capsules and associated extraction processes.

When protection through patent law threatened to expire, Nestlé looked for a way to maintain its competitive advantage. On July 15, 2001, it had the specific shape of its capsule registered as a international three-dimensional mark (No. 763 699), including for coffee and related products in the Benelux.

Trouble for Nestlé began in 2013, when competitor Mondelez (known for Douwe Egberts, among others) launched compatible coffee capsules. Mondelez and Kraft Foods (part of the same group) went to the French-speaking business court in Brussels asking that Nestlé's shape mark be declared invalid. They were vindicated by the corporate court on Nov. 4, 2016, which ruled that the trademark registration was invalid. Nestlé did not stop there and filed an appeal.

The crux of the discussion before the court of appeals

The central legal question is based on a fundamental principle in trademark law. According to the Benelux Convention on Intellectual Property (BCIP) may be characters that only consist of a form necessary to obtain a technical outcome do not constitute a valid trademark. This rule should prevent a company from acquiring a monopoly on a technical solution through trademark law - which in theory can be perpetual. That is what patent law, which by definition is limited in time, is for.

Mondelez argued that the shape of the Nespresso capsule is completely dictated by technical requirements. Each feature - the conical shape, the protruding rim, the membrane - would have a specific function in the coffee-making process.

Nestlé countered that the form was not only technical determined. According to Nestlé, form also contained non-functional, arbitrary or ornamental elements. Thus, the shape would be more than mere engineering. Moreover, Nestlé argued, the existence of differently shaped, compatible capsules on the market proves that the specific Nespresso shape is not "necessary" to obtain the same technical result (a cup of coffee). Nestlé even requested the court to submit (preliminary) questions to the Court of Justice of the European Union on this issue.

Appeals court's analysis and ruling

The appeals court follows the reasoning of Mondelez and the corporate court and upholds the invalidity of the shape mark. Nestlé's arguments are dismissed one by one.

The court ruled that the assessment of "technical necessity" must look to the essential characteristics of form. It analyzes the shape of the capsule as registered and determines that all of its essential parts perform a technical function:

• The general bell or conical shape: This is essential for proper water flow and even extraction of coffee.
• The protruding edge: It serves to correctly position and seal the capsule in the machine.
• The membrane on the wide side: This is designed to be punctured by the machine to allow the coffee to drain.
• The blunted top: This is punctured to inject hot water under pressure into the capsule.

The court concludes that these features are not arbitrary or fanciful, but rather necessary to obtain the intended technical outcome - efficiently producing an espresso with a Nespresso machine.

The argument that there are alternative forms exist that lead to a similar result is considered by the court to be non-boring. The law prohibits the registration of a form that is in itself is solely technically determined, regardless of whether other technical solutions are possible. The existence of alternatives overrides the functional nature of the registered form not on.

Conclusion and practical advice for your business

This ruling is a clear reminder of the strict limits of trademark law. The protection of a shape as a trademark is possible, but only if that shape is not merely dictated by technology. The temptation to protect a technical innovation via a shape mark "in perpetuity" comes up against a clear legal limit.

As an entrepreneur, have you developed a product with a unique and recognizable shape? This ruling highlights the importance of a thoughtful intellectual property strategy:

1. Analyze the function of the shape: Is the design of your product primarily functional, or does it contain distinct, non-functional elements that serve purely for recognition (ornamental, fanciful)?
2. Consider patent protection: For the purely technical aspects of an invention, patent law remains the way to go. Just know that this protection is time-limited.
3. Strengthen your mold brand: Do you still want to register a shape mark? Then make sure you can prove that the shape is a significant non-functional element contains. Add any detail that has no technical function. This increases the likelihood that your shape mark will pass the judge's test.

The line between a technical concept and a distinctive trademark is often thin. A misjudgment can lead to years of legal proceedings and the loss of a crucially important intellectual property right, as Nestlé experienced.