Nestlé enforces 3D Nespresso capsule mark

Nestlé has obtained an ex parte injunction preventing Swiss retail chain Denner from selling capsules (pictured below) compatible with Nestlé's Nespresso machines.

Nestlé filed its complaint on January 6 2011, and the Commercial Court of St Gallen handed down the injunction on January 10, which is probably a lot quicker than Denner would have hoped. The court held that the shape of the Nespresso capsule mark (pictured below) was not purely determined by technical considerations.

Nestlé argued that capsules compatible with the Nespresso machines did not need to display the trademarked shape (exhibit 25, which was filed in support of this claim, was not public), and the court found this argument convincing. Nestlé also showed that more than 50% of the Swiss general public associated the trademarked shape with Nespresso.

Interestingly, Nestlé also submitted a survey, conducted on January 5 2011, which showed that 50% of the Swiss public associated the infringing capsules with Nestlé. It was thus a 'confusion survey' - however, so far, the general consensus has been that these are inadmissible, as likelihood of confusion is a legal concept. Arguably, this was a clever strategy on Nestlé's part. On the other hand, it was probably not that clever on Denner's part to literally translate Nestlé's registered word mark WHAT ELSE into Swiss-German in its advertising campaign ('Denner - was susch?').

The court had no trouble finding that Nestlé's mark had been infringed. This was an ex parte injunction, so the dispute is by no means over.

Mark Schweizer, meyerlustenberger, Zurich 

Get unlimited access to all WTR content