The sun sets on Capri Sun's shape mark

06 March 2015

Nina Dorenbosch, Manon Rieger-Jansen

Capri Sun markets juice concentrated drinks which are sold in laminated foil pouches.  Capri Sun has an international trade mark for the shape of the pouches, which is inter alia designated for the Benelux.  In 2014, the shape mark was subject of dispute in two Dutch cases.

Capri Sun sought to obtain a cease and desist order against Van Doorne Beverages and subsequently Riha Wesergold for the alleged infringement of its shape mark.  However, the actions backfired since the shape mark was not once, but twice declared invalid by two Dutch courts.

In April 2014 the Court of The Hague had already declared Capri Sun's shape mark to be invalid on absolute grounds.  However, since the declaration of invalidity did not have immediate effect, and Capri Sun filed for appeal, the Court of Amsterdam in a recent case was obliged to go through the same arguments once again.

As in the earlier case, Capri Sun claimed infringement of its shape mark and slavish imitation of its juice containers.  Similarly, the defendant countered with a claim for invalidity of the shape mark and argued that the shape was necessary to obtain a technical result.

For an assessment of technical necessity both Courts identified the following essential characteristics of the shape mark for a small stand-up pouch:

  • rectangular shape;
  • welded seams at the top and sides;
  • rounding at the bottom (also called the "belly" by parties);
  • the pouch tapers off towards the bottom; and
  • made of a reflective material.

Both Courts gave various reasons why all characteristics were considered necessary to obtain a technical result. These considerations related amongst others to user-friendliness, economy of the manufacturing process, ensuring a water-tight pouch and maximising shelf-life. Since all essential characteristics had to be regarded as necessary to obtain a technical result and as the stand-up pouch did not contain any important non-functional elements, the Court of The Hague and subsequently the Court of Amsterdam declared the registered shape mark to be invalid for the Benelux.

All that remained for Capri Sun was its claim for slavish imitation of the juice pouch.  The Court of The Hague made a simple conclusion that since all characteristics of the pouch were functional, it could not be said that the reproduced elements were inconsequential for the quality and usefulness of the product.  Therefore, the alleged similarity could not constitute slavish imitation.  The Court of Amsterdam came to the same conclusion but on different grounds. Namely, the Court ruled that Riha did not fail in its duty to prevent confusion, because it had very prominently placed its trade name on the packets, which gave the packets a different overall impression.

Now that Capri Sun had been disappointed on both grounds – trade mark infringement and slavish imitation – and lost the same shape mark for a second time, Riha turned the tables on Capri Sun and introduced a claim for damages for trying to enforce non-existent trade mark claims.  This however, did not meet the approval of the Court of Amsterdam. The proceedings between Capri Sun and Riha started by a civil seizure of Riha's allegedly infringing juice pouches, and at the time of such seizure the trade mark right belonging to Capri Sun had not yet been declared invalid by a Benelux court.  Thus, Capri Sun could still base its actions on the validity of the mark.  Furthermore, Riha failed to convince the Court that it had felt obliged to stop production of its pouches during proceedings.

In the end, despite having had two tries, Capri Sun did not succeed in the Netherlands. It remains to be seen what the Court of The Hague will say on appeal. In a comparable case in Germany, the German Patent and Trade Mark Office at first instance declared the similar German shape mark invalid.  However, given the fact that despite this decision, the Oberlandesgericht Cologne on appeal maintained the injunction against Riha Wesergold for infringement of the mark, the sun might perhaps continue to shine on the shape mark in Germany.