Capri Sun drinks feature regularly in our house when a picnic or backpack is called for – they are convenient and the boys love them. So it was with interest that I spotted their claim for infringement of their international trade mark for the 3D shape of the packaging. It has long been possible to register 3D shapes as trade marks but it is becoming harder to maintain the registration as the scope of judicial scrutiny gets more stringent when considering whether the mark should have been registered in the first place.

Capri Sun brought legal action against Van Doorne Beverages and subsequently Riha Wesergold for the alleged infringement of its Benelux 3D shape mark. However, in April 2014 the Court of The Hague declared Capri Sun’s 3D shape mark to be invalid on absolute grounds. However, since the declaration of invalidity did not have immediate effect and Capri Sun appealed the decision, the Court of Amsterdam in a recent case was obliged to go through the same arguments once again.

The main argument in the appeal case, as with the earlier case, was that there was infringement of Capri Sun’s shape mark and slavish imitation of its juice containers. The defendant’s fist line of defense, as one would entirely expect, was that the shape mark was invalid on the grounds that the shape is necessary to obtain a technical result.

Capri Sun claimed that the following elements where characteristic of their 3D shape mark and were replicated in the Wesergold pouches:

Unfortunately for Capri Sun, both Courts gave various reasons why they considered that all such characteristics were necessary to obtain a technical result – ie for the small pouch to stand upright. 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.

The important point to bring out here is that in order for the 3D shape mark to have been valid, it required (as with normal word marks or figurative marks) elements which were distinctive to Capri Sun – ie, non-functional elements which lead consumers to recognise that the shape belongs to Capri Sun.

With regard to Capri Sun’s additional claims that the pouches were a ‘slavish imitation’ of their own pouches, both courts rejected this argument. It didn’t help that the Wesergold pouches clearly promoted their own brand on the packaging – therefore, like the common ‘look alikes’ that we all recognise on the supermarket shelves, there was no actual confusion on the part of the public. They knew that the pouches were not Capri Sun pouches and chose to purchase them (or not) regardless.

Similar actions are continuing in Germany, where despite this decision, the Cologne courts maintained the injunction against Wesergold for infringement of the 3D shape.

My personal view is that provided that 3D shape marks can genuinely designate the origin of particular products as being those of a particular proprietor, then they will remain an important part of any company’s trade mark portfolio.