Nestlé suffers blow in yet another dispute over Nespresso capsules


The Federal Supreme Court has allowed an appeal by Ethical Coffee Company SA in a dispute over the sale of capsules compatible with Nestlé's Nespresso coffee machines (4A_36/2012, June 26 2012).

Ethical Coffee distributes coffee capsules that are compatible with Nestlé's Nespresso machines. Nestlé had obtained an ex parte injunction against the sale of Ethical Coffee's capsules. 

Ethical Coffee's capsules                                         Nestlé's Nespresso capsule mark

The key issue of this case was whether the shape of the Nespresso capsules is necessary to obtain a technical result. Ethical Coffee submitted an expert opinion stating that this was the case, while Nestlé submitted a declaration to the contrary by one of its employees. The Cantonal Court of Vaud sided with Nestlé and affirmed the ex parte injunction as a preliminary injunction in November 2011. Ethical Coffee appealed to the Federal Supreme Court.

The Supreme Court allowed the appeal. It revoked the decision of the Cantonal Court and sent the case back to it on procedural grounds. According to the Supreme Court, neither the expert opinion nor the declaration by Nestlé's employee was sufficient to support the conclusion that the shape of the Nespresso capsules was necessary or not to obtain a technical result. The lower court will have to appoint a court expert.

Of interest in this decision are some statements made by the Supreme Court in obiter dicta, which obviously hinted at the court's stance on the material issue. It noted that Nestlé had first considered the shape of the Nespresso capsules to be an invention and had filed for patent protection. The law provides for a limited time of protection for technical inventions, which had expired in this case. Protecting an invention as a trademark, which can be renewed indefinitely, undermines the limited scope of protection for inventions.

These comments are similar to the reasoning of the US Supreme Court in TrafFix Devices Inc v Marketing Displays, Inc, which concerned a dual spring design for (traffic) signs that was originally patent-protected.

Mark Schweizer, Meyerlustenberger Lachenal, Zurich 

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