Federal Patent Court restricts trademark protection for Nespresso coffee capsule – Implications for intellectual property law
In its decision of 20 December 2017 (Ref.: 25 W (pat) 112/14), the Federal Patent Court (BPatG) made a landmark ruling regarding trademark protection of technical product shapes. The subject of dispute was the three-dimensional design of the well-known Nespresso coffee capsule. The ruling led to a partial revocation of trademark protection for this particular product shape. This decision not only sheds light on the distinction between trademark law and other intellectual property rights such as patent law and design law, but is also of considerable significance for market participants in the consumer goods segment.
Background of the proceedings
The trademark owner had obtained trademark protection for its Nespresso capsules as a three-dimensional trademark at the German Patent and Trademark Office (DPMA). The core of the trademark registration was the distinctive shape of the aluminum capsule, as used in Nespresso coffee machines. The registration was justified by the special shape of the capsule, which set it apart from other products on the market.
A competitor subsequently filed a request for cancellation of the trademark. He argued that the shape of the capsule was purely technically determined and therefore not eligible for trademark protection pursuant to Section 3 (2) of the Trademark Act (MarkenG). According to this provision, signs are not protectable if they are dictated exclusively by the technical function of the goods.
Decision of the Federal Patent Court
The Federal Patent Court ruled that the scope of protection for the trademark had to be limited in essential parts. Although a product shape can in principle be eligible for trademark protection, this presupposes that the design features are not determined solely by technical functions. In the present case, the judges found that the shape and structure of the Nespresso capsule primarily serve compatibility with the corresponding coffee machines. The shape is thus mainly dictated by technical requirements and does not meet the requirements for trademark-eligible distinctiveness.
Nevertheless, the court clarified that not every design serving functional purposes must necessarily be excluded from trademark protection. The decisive factor remains the individual case assessment as to whether and to what extent, in addition to technical necessity, there is design freedom that might indicate a function as an indication of origin. In the case of the Nespresso capsule, however, the court was convinced that the disputed design was essentially determined by technical requirements and, as a result, excluded from trademark protection.
Consequences for trademark law and product design
Distinction between intellectual property rights
The decision underlines the clear separation of the scopes of protection of trademark, patent, and design law. While trademark law serves to protect the function of origin, patents and designs secure technical innovation or aesthetic design, respectively. The refusal of trademark protection for functionally determined product shapes aims to ensure that fundamental technical solutions cannot be monopolized through virtually unlimited-duration trademark protection.
Implications for companies and competition
For companies in technology-driven markets, this judgment is of considerable importance. Manufacturers wishing to use certain product shapes determined by their technical function gain greater legal certainty thanks to the clear position adopted by the BPatG. Conversely, manufacturers are required to develop creative designs distinguished not only by technical features but also by unique indicators of origin in order to obtain full trademark protection.
For competition and market participants in the area of system products—such as compatible coffee capsules from third-party providers—the decision can be viewed as an impetus for increased market access and reduced market restrictions. At the same time, the risk of disputes over the boundaries of intellectual property rights remains, as each case requires assessment as to whether the degree of design freedom satisfies the requirements for trademark protection.
Practical significance and outlook
The ruling is a significant example of the ongoing development of case law concerning trademark protection for technical product shapes. It points out that previous monopoly protection of expiring patents or utility models cannot be arbitrarily extended via trademark law—an aspect of considerable strategic relevance for innovation-driven companies as well as for producers of imitation products.
Since appeals against this decision are generally permissible and final clarifications could be provided by the Federal Court of Justice in similar cases, future developments should be monitored closely.
Note
Please note that the information presented here is based on the published decision of the Federal Patent Court (Reference: BPatG, 25 W (pat) 112/14) and relates to the findings made in each individual case. Further legal questions and assessments must always be considered in light of the specific circumstances and the current legal situation.
Anyone confronted with similar trademark law issues can, if needed, contact the lawyers at MTR Legal Rechtsanwälte to have their individual legal framework reviewed.
