On 19 December 2017 the Amsterdam Court of Appeal confirmed in appeal proceedings between Capri Sun AG (Switzerland) and Riha Wesergold Getränke GmbH & CO KG (Germany) the decision of the District Court of Amsterdam of 24 December 2014, in which the District Court - foremost - upheld Riha’s defense that the shape of Capri Sun’s pouches can not be protected as a trade mark and that Capri Sun’s international trade mark registration for said shape (IR 677879, registered on 26 June 1977) should be cancelled (for the territory of the Benelux).

The Court of Appeal agrees with the District Court that the shape registered by Capri Sun as a trade mark is so much defined by technique and functionality that it can not be granted trade mark protection with a view on article 2.1 par. 2 of the Benelux Convention on Intellectual Property (BCIP). In so far as relevant here article 2.1 par. 2 BCIP reads as follows: ‘However, signs consisting solely of a shape which (…) is necessary to obtain  a technical result cannot be considered as being trademarks.’

The involved pouches are made from flexible (reflecting/aluminum colored) composed foil with welded side seams and have a rectangular shape when unfilled. They are provided with an oval shaped insert at the bottom. In filled condition the pouches, when laid down flat, have also (more or less) a rectangular shape and the beverage is divided more or less equally along the length of the pouch. The (slightly) tapered shape (Capri Sun described the front view of the shape in appeal as a isosceles triangle with blunt edges at the bottom, straight sides which bend outwards and  - from a horizontal perspective - a straight topside), as depicted in the trade mark registration, is the result of a bulge at the bottom of the pouches which appears if the filled pouched is placed upright.

Riha argued that such type of beverage packaging offers several practical/functional advantages. The Court of Appeal finds that Riha has explained this sufficiently convincing in appeal. By its (more or less) rectangular shape and evenly division of the beverage the pouch can be placed in a laying position in (for example) a lunch box without losing too much space. Because the pouch can be placed upright when using a straw spillage (for example) when using a meal can be prevented as much as possible. The dimensions of the pouch are such that it contains a quantity of beverage which is suitable not least for the target group (often children). Because the two foil sides are merged at the top and the bulge is at the bottom the pouch (which is composed of flexible material) the pouch is relatively stable in upright position. The used quality of composed foil with broad welded seams offers firmness and protects against leakage when transporting the pouch.

Taking this into account the Court of Appeal rules that the shape of the Capri Sun pouch is a shape of which the essential characteristics are inherent to the generic function of said packaging. Granting this shape trade mark protection would hinder competitors in an undesirable way to give to and use for their beverage packaging an equally useful shape.

The Court of Appeal considers that there is no factual evidence that other considerations - other then practical and technical considerations - have played a rol in the design of the pouch (Capri Sun argued that creative and aesthetic choices were involved). Starting point for the Court of Appeal is after all that a basically (more or less) rectangular shape which is obvious in terms of hight width ratio with a view on the function of the packaging (for example that children can hold the pouch when drinking from it at school). The trapezoidal shape of the pouch originates alone from the function of it as beverage container which is put upright whilst consuming the beverage and is necessary to fulfill its function as described by the Court of Appeal (practical/functional advantages, see above).

The argument by Capri Sun that it is possible to create (slightly) different shaped stand up pouches with an equally useful shape, is rejected by the Court of Appeal, already because it is not evidenced that such shapes bear the same advantages of use. The Court of Appeal considers furthermore that it should be presumed that a (more or less) rectangular shape for pouches which can be laid down in combination with the possibility to place the pouches upright includes advantages for consumers/users which they will search also in products of competitors. With a reference to the CJEU’s decision in Philips/Remington (18 June 2002 C-299/99) the Court of Appeal holds that the technique exception is in place to prevent the coming into existence of a monopoly for such functional characteristics, whilst the availability of other shapes with a same technical outcome does not alter the technique exception as a ground for invalidity of a trade mark registration.

Because the technique exception is applicable, the Court of Appeal agrees with Riha that the distinctiveness which Capri-Sun’s pouches have gained over the years has no significance.

The Court of Appeal therefore concludes that the shape trade mark registration invoked by Capri Sun is invalid and that the infringement claims by Capri Sun should be rejected.

Capri Sun also relied on alleged passing off (‘slaafse nabooting’), but the Court of Appeal also rejects this claim, basically because the characteristics of the packaging are necessary to obtain a technical result, whilst eventual consumer confusion can not be prevented without removing the efficacy and usefulness of said packaging. The fact that the pouch of Riha is made from similar reflecting aluminium coloured material is found to have no meaning at all. Also from the arguments of Capri Sun follows that this material is used to make the pouch fluid- and air-thight and prevent the content from light influence. Riha also argued that the foil is standard material which use is normal from a cost perspective. With regard to the other elements of the appearance of Riha’s pouch the Court of Appeal finds that the lay-out is different enough to prevent unneccesary confusion. Riha uses a different trade mark (name) on its packaging on a prominent place, whilst the styled texts and the (background) colours are different.