Court wakes up and smells the coffee

Nestlé, the Swiss food and drink company that boasts over 2000 brands, has taken a knock to its reputation after having one of its 3D trade marks annulled by Germany's Federal Patents Court.

This is not the first time we have reported on Nestlé's trademark struggles. We previously wrote an article on Nestlé's unsuccessful attempt to trade mark the four-fingered shape of its Kit Kat bars, that article can be read here.

This time the dispute concerns the Nescafé branch of Nestlé, the brand known for its coffee products and robust intellectual property strategy. In 2001, Nestlé applied for a 3D trade mark for its coffee capsules which can be used in its Nespresso coffee machines. When competitors started creating their own coffee capsules that were compatible with the Nespresso machine, albeit for a cheaper price, Nestlé sought to enforce its rights.

In 2013 however, Mondelez- Kraft applied to annul Nestlé's trademark registration for its capsules on the grounds that the shape of the capsule was necessary to obtain a technical result. The case was successful for Mondelez Kraft and Nestlé's trademark was annulled in 2014. Nestlé, disagreeing with the decision, appealed the decision. It emerged this week that the result of the appeal was not a success for Nestlé after the Court of Appeal upheld the first decision of The Brussels Court of Commerce in that the shape of the capsule is necessary to obtain a technical result.

Competitors that were previously cautioned for creating capsules that were compatible with the Nespresso coffee machine will now be able to create their capsules and Nestlé will now have to deal with cheaper competition.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.