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Spain Update: Legal Considerations on the Three-Dimensional Trademark Protecting Individual Coffee Capsules
24/09/2021The Courts have decided that this is a product with mere technical functionality and that, therefore, once the 20-year period granted by a patent has expired, Nestlé’s competitors cannot be prevented from manufacturing or marketing it.
Recently it has been known that the company Nestlé, owner of the brand “Nespresso” has lost the exclusive protection granted by the three-dimensional trademark that protected the individual coffee capsules compatible with its coffee machines. Initially and until 1996, these capsules were registered and protected under the figure of the patent (industrial property right that protects inventions).
But why was protection subsequently chosen through a three-dimensional mark? Because patents only grant exclusivity in manufacturing and marketing, for a limited period of 20 years. Once this period is reached, the invention becomes part of the public domain and anyone is entitled to manufacture and commercialize it.
On the contrary, trademarks can grant indefinite protection, if they are renewed every 10
years. Therefore, it is much more interesting for the creator to have a trademark registration than a patent registration, because this can grant him a monopoly indefinitely.
There are many types of brands. Nominative (denomination only), figurative (only one logo), mixed (combination of nominative and figurative), three-dimensional (as is the case of the capsules subject to controversy) and, in recent times, reference is also made to sound, olfactory, gustatory and even tactile brands, which move away from traditional brands and aim to cover new sectors and products.
In this case, Nestlé managed in 2000 to protect its coffee capsules under the cover of a three-dimensional brand. Thus, the protection could be extended indefinitely, which placed it in an ideal position against its competitors.
However, 10 years ago a Swiss civil court annulled the registration of this mark, arguing that the shape of the capsules already belonged to the public domain. This usually happens with brands that become so popular that they lose their distinctiveness. The consumer no longer identifies them with the owner of the trademark but uses them to refer, in general, to the product itself (other examples of this phenomenon are found with “Kleenex”, “Mascara”, “Albal”, etc.).
A form cannot be registered as a trademark if it must necessarily be taken over by a competitor wishing to market a similar product.
- Faced with that judgment, Nestlé appealed to higher courts that have finally determined that it is not possible to protect those capsules under a trademark because: “a form cannot be registered as a trademark if it must necessarily be assumed by a competitor who wishes to market a similar product”.
An explanation for this is found in article 5 of the Spanish Trademark Law (Law 17/2001) which, when referring to the absolute prohibitions of trademark registration, refers in section e) to signs: “constituted exclusively by the form or other characteristic imposed by the very nature of the product or by the shape or other characteristic of the product necessary to obtain a technical result, or by the form or other characteristic that gives substantial value to the product.” this case, the crux of the matter would be that these coffee capsules must necessarily have that shape (which was intended to be monopolized by Nestlé) in order to be used in the capsule coffee makers of Nestlé’s competitors.
Returning to the prohibition of Article 5 e) of the Spanish Trademark Law, we see that the prohibition can be broken down into two cases: – A sign composed exclusively of forms or characteristics imposed by the very nature of the product.
For example, it could not be registered as a three-dimensional trademark to market apples, the shape of an apple, without any additional particular element that gives it distinctiveness. However, Adidas was able to register the ball of the FIFA World Cup Russia 2018 (the “Teslar”), because it presented particular reliefs and texture, which distinguished it from other soccer balls. - A sign whose shape or characteristic of the product is necessary to obtain a technical result. That is the possibility of registering products with technical functionality as three-dimensional trademarks would be called into question. Precisely, this prohibition seeks to ensure that companies cannot use trademark law to perpetuate, without limitation in time, exclusive rights over inventions or technical solutions. A different question is whether what is intended to be protected is not only a functional form but also presents ornamental or fantasy elements, with a relevant paper or weight, which give it distinctiveness.
In the case of Nespresso capsules, the Courts have finally decided that it is a product with a mere technical functionality and that, therefore, once the 20-year period granted by a patent has expired, Nestlé’s competitors cannot be prevented from manufacturing or marketing it.
Published at ABCD Legal, the Blog of Marimón Abogados in Food Retail & Shoppers.
By Maite Andreva, Marimón Abogados, Spain, a Transatlantic Law International Affiliated Firm.
For further information or for any assistance please contact spain@transatlanticlaw.com