This blog was co-authored by: Allison Williams, Director and Bongekile Gasa, Candidate Attorney.

The term trademark law refers to a branch of intellectual property law which differentiates between different goods and services through providers’ independent use of brand names, slogans, logos or other non-traditional mark. The term trademark can be described as a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. A trademark is a badge of identification which provides legal protection for brands.

Like trademark law, patent law comprises a branch of intellectual property law which grants broad, exclusive rights for useful inventions. Inventions comprise inventive, non-obvious products, processes and the like that provide a new way of doing something, or offer a new technical solution to a problem. Not premised on identification like trademarks, patents refer more to the notion of protecting a creation or innovation.

Traditionally, patent law has given protection to tangible scientific inventions, such as car engines, zippers, heating coils and circuit boards. However, over time patent law has become more fluid and flexible and has expanded protection to include a vast category of other inventions, including novel algorithms and software that includes novel aspects.

In practice, a patent can be granted if an invention is:

  1. not a natural object or process;
  2. new, in the sense of being completely novel;
  3. useful; and
  4. not obvious.

Although patents protect originality and afford the owner a monopoly in relation to their invention, such protection is not indefinite. Patents are granted for 20 years only. Once granted, a patent awards its inventor an exclusive right to exploit their invention within this 20 year period. After that, the invention enters the public domain, free for anyone to use.

Despite both branches of law falling within the ambit of intellectual property law, each area functions differently and independently and they therefore cannot be regarded as interchangeable. A misunderstanding of the distinction can either make or break a legal dispute. This position is illustrated through the long standing legal battle by Nespresso over its invention of the brand’s coffee capsules.

In 2011, Nestle and its Nespresso division took legal action in Vaud, Switzerland to ban the sale of coffee capsules produced by a competitor coffee maker by the name of Ethical Coffee Company. ECC had originated a coffee capsule very similar in shape to that of Nespresso’s and the shape was compatible with Nepresso’s coffee machines. The main difference between the coffee capsules was that, unlike Nespresso’s pods which are made from aluminium, the ECC capsules were made from plant fibres and biodegradable starch.

The issue before the court was whether Nespresso could sustain its argument that ECC not only infringed its soon to be expiring patent right in respect of the coffee capsules but that, due to the similarity in shape and size of the coffee pods, ECC had infringed Nespresso’s registered shape trade mark. The dispute was founded on the legal principles of trademark and patent law. The court emphasised that trademark law deals with brand identification and triggers protection through logos, slogans, brand names and signs not through shapes and designs of items. On this basis, the lower court ruled against Nespresso, holding that the ECC coffee pods did not infringe the Nespresso trade mark.

On appeal, the Swiss Federal Supreme Court found against Nespresso on the same legal rationale. The shape of Nespresso’s coffee capsule could not be registered as a trade mark, as shape does not trigger brand identification protection.

The decision in the above case was then also followed in the case of Nespresso versus Dualit, where Dualit’s company’s coffee pods, which were also compatible with the Nespresso’s coffee machines, were alleged to infringe the Nespresso trade mark.

Nespresso’s defeat illustrates the fact that trademark law cannot be used to protect the technical features of a shape, where such features are necessary to obtain a specific technical result, Nespresso would have needed to rely on a valid design or patent registration for that. This is because a trade mark can theoretically endure in perpetuity if it is constantly renewed, whereas registered design and patent rights are limited in duration. Trade mark rights cannot therefore be used to operate in the same manner as registered design or patents rights.