In theory, shapes can be registered as trademarks and monopolised. However, practice shows that a shape mark cannot be registered or invoked against third parties without justification. Capri-Sun, the producer of the well-known fruit drink of the same name, is now experiencing the complexities of shape marks for itself. However, there would seem to be some light at the end of the tunnel for Capri-Sun.
1. What’s the problem?
Capri-Sun has registered the striking packaging it uses for its fruit drinks – the stand-up pouch – as a trademark. This is a shape mark, because Capri-Sun has also registered the three-dimensional design of the stand-up pouch.
In recent years, Capri-Sun has brought legal proceedings against competing producers of similar fruit drinks. After coming away empty-handed in the Netherlands, Capri-Sun recently gained success (at long last) in its proceedings before the commercial court in Brussels.
2. So, remind me again, what kind of protection do shape marks have?
The starting point is that a shape can be trademarked too. Having said this, very few trademark proprietors are actually successful in establishing a right to a trademark on the shape of a product or packaging. This is because, under case law, the public is not inclined to actually view a shape as a trademark. In addition, if a shape is to be a valid trademark, it may not have been determined on a solely technical basis. This determination is the subject of a great deal of discussion among lawyers.
3. What did the court in Brussels decide?
In this case, Capri-Sun challenged Riha, which also sells a fruit drink in a stand-up pouch. Riha defended itself by asserting that the essential characteristics of the stand-up pouch are the result of Capri-Sun’s production process and, as such, determined on a solely technical basis. It claimed that, as such, Capri-Sun’s shape mark was invalid. However, the court in Brussels makes an important distinction between shapes that are necessary for the achievement of a specific technical outcome on the one hand and shapes that have a technical effect as a matter of secondary importance, on the other hand. Only the first group should be excluded from trademark protection; not the second group.
According to the court in Brussels, the Capri-Sun stand-up pouch falls under the second group and is eligible for trademark protection. The fact that many fruit drinks are sold in pouches in various (different) shapes shows that the specific shape of the Capri-Sun stand-up pouch is not necessary in terms of technical operation, which could be achieved using other shapes too.
4. What now?
This ruling is a relief for trademark proprietors. They hope that it will mark the start of a new era. The challenge for trademark proprietors is the registration of a shape mark such that it does not create the impression of having been determined on a solely technical basis.
