Another legal dispute has arisen over a company promoting capsules that are said to be compatible with Nespresso single-serve machines.
Law firm Harness, Dickey & Pierce PLC reported that Nespresso USA had sued Jones Brothers Coffee Company in the US District Court for the Southern District of New York [Case 1:19-cv-03449], alleging that Jones Brothers is infringing its trademarks and trade dress in selling coffee capsules compatible with Nespresso’s coffee machines.
More specifically, Nespresso alleges that Jones Brothers’ use of the phrase ‘Nespresso compatible’ on its packing and in its advertising “falsely suggests and/or implies endorsement and/or sponsorship by and/or affiliation with, Nespresso.” [Complaint, Para. 15].
“If in fact Jones Brothers’ capsules are compatible with Nespresso, however, that seems like a fact that consumers would want to know and Jones Brothers should be entitled to tell them,” said Bryan Wheelock, a principal at the law firm.
“Not surprisingly, there is nothing in the complaint to suggest how Jones Brothers could otherwise convey this information to consumers. It will be interesting to see how the line is drawn between Jones Brothers’ right to provide information about the use of its products and Nespresso’s right to be protected from competitors confusing its customers.”
The law firm said Nespresso also complained about the shape of Jones Brothers’ capsules, which it describes as “nearly identical replicas of the Nespresso Trade Dress in size, shape colours and appearance” down to the “‘dimpled’ cone shape that is identical to the iconic feature of Nespresso’s capsule.” [Complaint, 16].
“It seems that Jones Brothers would have a right to copy technology from an expired patent, but if Jones Brothers’ capsule is really causing actual confusion, should there be a remedy for Nespresso, or should the deal they struck getting the patent be strictly enforced,” Mr Wheelock asked.
“This is just the latest instance of balancing intellectual property rights with competition. Intellectual property should never impede competition, only unfair combination. Where Jones Brothers’ conduct falls is now up to the Southern District of New York to decide.”