Capri-Sun pouch design trademark owner takes US firm to court

By Jenny Eagle contact

- Last updated on GMT

Capri-Sun pouch design trademark owner takes US firm to court
Deutsche SiSi-Werke Betriebs (SiSi), which owns the pouch shape design trademark of Capri-Sun juice, has filed a lawsuit against Faribault Foods in the US for allegedly selling and distributing flavored drinks in similar pouches.

The lawsuit was filed by intellectual property attorneys at Stroock & Stroock & Lavan in New York at the US District Court for the District of Minnesota, in Minneapolis, Minnesota.

Wal-Mart's Great Value line of flavored juice drinks

The Complaint alleges Faribault produces packaging and product designs for several brands including Wal-Mart's Great Value line of flavored juice drinks, and the pouch design of each of these products mimics the design of SiSi's registered trademark.

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SiSi claims Faribault adopted its iconic pouch design with the intention to confuse or to deceive the public as to the source of the juice drink and with the intention Faribault's pouch juice drinks are affiliated with Capri-Sun's juice drinks.

"The iconic pouch design is a strong indicator of the source of Capri-Sun juice drinks in the eyes of the consumers in the US and throughout the world and it would be a disservice to consumers to allow Faribault to continue deceiving and confusing customers into believing Faribault beverage products are affiliated with or endorsed by the same source as Capri Sun juice drinks​," said Carsten Kaisig, CEO, Arios Group of Companies and MD, SiSi in a statement.

SiSi is represented by Steven B. Pokotilow, Laura Goldbard George and Binni N. Shah of Stroock and Stroock and Lavan, and by Peter Lancaster of Dorsey & Whitney, LLP in Minneapolis, Minnesota.

Other Capri-Sun pouch patent infringement

This is not the first time Capri-Sun has been in the news for pouch patent infringement. In 2014, the shape was the subject of two disputes in Holland, according to Bird & Bird international law firm.

In the first, Capri-Sun sought to obtain a cease and desist order against Van Doorne Beverages and subsequently Riha Wesergold for the alleged infringement of its shape mark.  However, the actions backfired since the shape mark was not once, but twice declared invalid by two Dutch courts.

In April 2014 the Court of The Hague had already declared Capri-Sun's shape mark to be invalid on absolute grounds.  However, since the declaration of invalidity did not have immediate effect, and Capri-Sun filed for appeal, the Court of Amsterdam in a recent case was obliged to go through the same arguments once again.

As in the earlier case, Capri Sun claimed infringement of its shape mark and slavish imitation of its juice containers.  Similarly, the defendant countered with a claim for invalidity of the design and argued the shape was necessary to obtain a technical result.

Characteristics of a small stand-up pouch

For an assessment of technical necessity both Courts identified the following essential characteristics of the shape mark for a small stand-up pouch:

  • rectangular shape;
  • welded seams at the top and sides;
  • rounding at the bottom (also called the "belly" by parties);
  • the pouch tapers off towards the bottom; and
  • made of a reflective material.

Both Courts gave various reasons why all characteristics were considered necessary to obtain a technical result. 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 Court of The Hague made a simple conclusion that since all characteristics of the pouch were functional, it could not be said the reproduced elements were inconsequential for the quality and usefulness of the product. 

The Court of Amsterdam came to the same conclusion but on different grounds. Namely, the Court ruled that Riha did not fail in its duty to prevent confusion, because it had very prominently placed its trade name on the packets, which gave the packets a different overall impression.

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