{"id":99719,"date":"2025-08-10T19:44:32","date_gmt":"2025-08-10T18:44:32","guid":{"rendered":"https:\/\/www.ictrechtswijzer.be\/?p=99719"},"modified":"2025-08-10T19:57:07","modified_gmt":"2025-08-10T18:57:07","slug":"the-nespresso-capsule-is-protected-as-a-shape-mark","status":"publish","type":"post","link":"https:\/\/www.ictrechtswijzer.be\/en\/wordt-de-nespresso-capsule-als-vormmerk-beschermd\/","title":{"rendered":"Is the Nespresso capsule protected as a shape mark?"},"content":{"rendered":"

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 Nestl\u00e9, the manufacturer of Nespresso, and competitor Mondelez. In a judgment of July 3, 2025<\/a> the Brussels Court of Appeal has tied the knot and upheld the invalidity of the Nespresso trademark.<\/p>\n\n\n\n

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

The facts: the long battle for the coffee capsule<\/h3>\n\n\n\n

The saga begins in the 1970s, when Nestl\u00e9 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, Nestl\u00e9 initially uses the patent law<\/strong>, 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.<\/p>\n\n\n\n

When protection through patent law threatened to expire, Nestl\u00e9 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)<\/a><\/strong>, including for coffee and related products in the Benelux.<\/p>\n\n\n\n

Trouble for Nestl\u00e9 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 Nestl\u00e9'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. Nestl\u00e9 did not stop there and filed an appeal.<\/p>\n\n\n\n

The crux of the discussion before the court of appeals<\/h3>\n\n\n\n

The central legal question is based on a fundamental principle in trademark law. According to the Benelux Convention on Intellectual Property (BCIP)<\/a> may be characters that only<\/em> 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.<\/p>\n\n\n\n

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.<\/p>\n\n\n\n

Nestl\u00e9 countered that the form was not only<\/em> technical<\/strong> determined. According to Nestl\u00e9, form also contained non-functional, arbitrary or ornamental elements. Thus, the shape would be more than mere engineering. Moreover, Nestl\u00e9 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). Nestl\u00e9 even requested the court to submit (preliminary) questions to the Court of Justice of the European Union on this issue.<\/p>\n\n\n\n

Appeals court's analysis and ruling<\/h3>\n\n\n\n

The appeals court follows the reasoning of Mondelez and the corporate court and upholds the invalidity of the shape mark. Nestl\u00e9's arguments are dismissed one by one.<\/p>\n\n\n\n

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