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A ruling with major implications
In its ruling of 3 July 2025, which has significant implications for the interaction between trademark and patent law, the Brussels Court of Appeal confirmed the invalidity of Nestlé’s three-dimensional trademark. This was for the shape of its Nespresso coffee capsules. The dispute between Nestlé and Mondelez-Kraft centered on whether the distinctive design of the capsules could be protected under trademark law. Alternatively, they considered whether it was required for technical reasons and therefore excluded under the Benelux Convention on Intellectual Property (BCIP).
Origins of the dispute
Nestlé had registered the shape of its Nespresso capsules (double cone shape with flattened section, circular rim, and fold) as an international trademark. The protection was in the Benelux. Mondelez-Kraft, a competitor in the coffee industry, marketed capsules that were compatible with Nespresso machines. They initiated proceedings to have Nestlé’s 3D trademark declared invalid. Their argument was that the shape was functional and could not be monopolized by trademark law.
In the first instance, the French-speaking Commercial Court of Brussels ruled in favor of Mondelez-Kraft. It declared Nestlé’s trademark for coffee and related products invalid. The court also ordered the trademark to be removed from the Benelux trademark register. Nestlé appealed, challenging only the part of the decision declaring the trademark for coffee invalid. No challenge was made to the earlier finding that the trademark for other food categories had lapsed due to non-use.
The legal framework
The proceedings focused on Article 2.2bis (e) BCIP. This article excludes from trademark protection all signs consisting exclusively of a shape imposed by the nature of the goods. It also excludes shapes necessary to give them a technical function or substantial value. The case law of the Court of Justice of the European Union specifies the purpose of this rule. It aims “to prevent trademark law from conferring on an undertaking a monopoly on technical solutions or functional characteristics of a product.”
Arguments from both sides
Nestlé argued that the shape of the capsule was not exclusively functional. It also had aesthetic significance that distinguished its product on the market. The company further argued that alternative shapes existed. This negated the need for its specific design. Mondelez-Kraft, on the other hand, argued that the entire shape was determined by technical considerations. The shape was designed to ensure precise alignment in Nespresso machines, enable optimal water flow during the brewing process, allow for safe piercing, and withstand internal pressure. Mondelez referred to earlier patents held by Nestlé, which described these advantages as the motivation for the design. This was proof that the shape had been chosen for its functionality and not for brand-related distinctive features.
The Court’s reasoning
In its ruling, the Court of Appeal carried out the usual two-step test. First, it identified the essential characteristics of the shape. Then, it examined whether these characteristics were necessary to achieve a technical result. The Court concluded that all the essential characteristics of the Nespresso capsule (the conical shape, the proportions, and the dimensions) were functional.
The decisive factor in this finding was the evidence from Nestlé’s patents, which showed the design offered specific technical advantages. The argument that aesthetic elements contributed to the overall shape of the capsule was not convincing. This was even more so since no significant decorative or arbitrary features could be identified.
The court also rejected the argument that the existence of alternative coffee capsules achieving the same technical result was relevant. Such alternatives do not detract from the technical function of the double cone-shaped capsule. According to the Court of Justice, their existence does not constitute grounds for setting aside the refusal or invalidity of the registration.
The outcome
The Court of Appeal ultimately upheld the lower court’s ruling. It declared that Nestlé’s 3D trademark for the Nespresso capsule for coffee and related products is invalid. The shape serves a technical function and cannot be protected under trademark law. The decision reinforces that functional product designs fall under patent law, not trademark protection.
Lessons from LEGO
A similar reasoning was applied in earlier case law concerning LEGO’s iconic building blocks (Court of Appeal Brussels, 2012/AR/824). The Court of Justice held that a shape necessary to obtain a technical result, such as LEGO’s interlocking brick design, cannot be protected as a trademark. This applies even if it has acquired distinctiveness. However, unlike in the Nespresso case, LEGO succeeded in registering certain three-dimensional trademarks for the same brick shape in relation to other product categories. These were areas where the shape no longer served technical functions, such as packaging, decorative items, and promotional merchandise. The Brussels Court of Appeal confirmed this nuanced approach in its 2012 judgment. They distinguished between the use of the shape as a technical mechanism (excluded from trademark protection) and its use as a non-functional branding element (eligible for protection).
Key takeaway
This contrast highlights how the technical necessity of a shape must be assessed. This is in relation to the goods for which trademark protection is sought. If the shape serves a technical function, it cannot be monopolized through trademark law. However, if the same shape is used in a non-functional context, protection may still be possible.
Contact our attorneys to ensure your product designs are protected under the right form of IP law.