Is the sun setting on Capri Sun’s shape mark in the Benelux?

By Manon Rieger-Jansen, Nina Dorenbosch


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

Capri Sun sought to obtain cease and desist orders against two competitors for their alleged infringement of Capri Sun’s shape mark. However, the actions backfired since the shape mark was declared invalid by two Dutch courts.

In both sets of proceedings, Capri Sun claimed infringement of its shape mark and ‘slavish imitation’ of its juice containers. The defendants countered with a claim for invalidity of the shape mark, arguing that the shape was necessary to obtain a technical result.

In assessing this argument, both courts identified the following essential characteristics of the shape mark for the 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.

The courts considered that all characteristics were necessary to obtain a technical result, on the basis of user-friendliness, economy of the manufacturing process, ensuring a water-tight pouch and maximising shelf-life.

Since all essential characteristics were regarded as necessary to obtain a technical result and as the stand-up pouch did not contain any important non-functional elements, the courts 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 concluded that since all characteristics of the pouch were functional, the alleged similarity could not constitute slavish imitation. The Court of Amsterdam came to the same conclusion but on different grounds, ruling that the alleged infringer did not fail in its duty to prevent confusion because it had very prominently placed its trade name on the packets, thereby giving the packets a different overall impression.

In the end, despite two attempts, Capri Sun did not prevail. 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, despite this decision, the Oberlandesgericht Cologne on appeal has maintained an injunction against one of Capri Sun’s competitors for infringement of the mark, meaning the sun may perhaps continue to shine on the shape mark in Germany.

This article is part of BrandWrites by Bird & Bird - May 2015