1. Aftermarkets: IP rights vs market protection?
The enforcement of Lavazza’s IP rights in the espresso systems market
LIDC Congress - Turin, 19 September 2014

2. Lavazza group BUSINESS AREAS 1,340 million € turnover in 2013 HOME
AWAY FROM HOME
COFFEE SHOP
FOODSERVICE
VENDING

3. THE LAVAZZA ESPRESSO SYSTEMS
1989
2003
2007
2012
LAVAZZA ESPRESSO POINT®
LAVAZZA BLUE®
LAVAZZA A MODO MIO®
KEURIG® RIVO®
For home consumers. Machines and capsules sold at supermarkets
For US home consumers. Brewing espresso and frothing fresh milk at the touch of a button
The first LAVAZZA espresso system for offices
A system designed for all spaces, public and private

4. LAVAZZA ESPRESSO POINT
1989
The first espresso system for offices and small communities is created

5. LAVAZZA BLUE Best Lavazza Ultimate Espresso
2003
A multi-channel system created for:
Public places
families
offices
Ho.re.ca.
families
offices

6. LAVAZZA A MODO MIO
2007
With this new espresso system for home use Lavazza enters large-scale and specialized retail chains

7. Keurig rivo
2012
Lavazza launches the new system KEURIG® RIVO® on the U.S. market

8. The MARKET OF espresso systems
The most growing segment of coffee market
High profitability, but huge investments to develop machines and capsules
Competition leading to continuous innovation and cost reduction
IP rights crucial to gain a competitive advantage
Enforcement of IP rights is often required

9. FROM ESPRESSO POINT TO BLUE
The first Lavazza espresso system, Espresso Point, was developed in For its convenience, quality and innovation it was a great success
The patent protection was weak. Around the end of the Nineties an increasing number of compatible capsules appeared on the market
Since the compatible capsules did not infringe the EP patent, Lavazza did not bring legal action against the producers
Today EP is considered the standard system for offices in Italy. Almost all Italian roasters have EP compatible capsules in their range of products
In 2000 Lavazza decided to develop a new generation of sealed capsules (no secondary packaging is needed) based on a patented technology which was exclusively licensed to Lavazza
The first Lavazza BLUE compatible capsules were launched in This time, Lavazza decided to sue the manufacturer of these capsules

10. THE ENFORCEMENT OF MONODOR PATENT
Three Italian courts and several companies were involved in this legal battle. The results were completely different in each case
Court of Turin
In September 2010 the single judge, on the basis of the opinion of the court’s expert, decided that the Monodor patent was infringed and granted the requested interim measures against the manufacturer and the distributors
The board of three judges in the second instance confirmed the first decision, excluding only the unfair competition
Court of Milan
In June 2011 the single judge refused the injunction for patent infringement because, since the patent would have expired in September 2011, there was no periculum in mora
The board of second instance confirmed the first decision for a different reason: (the Torino’s court report was disregarded because according to them it did not consider a patent which could invalidate Monodor’s patent)
The judges rejected also the injunction to use the mark AGOSTANI IN BLU to identify the LAVAZZA BLUE compatible capsules (in this case the judges were satisfied with the defendant’s claim that the use was ceased…)
Court of Bologna (action brought by Monodor against Caffita System in 2005)
In August 2011 the Tribunal, on the basis of the opinion of another expert, decided that the claim 1, 2, 3 and 17 of the Monodor patent were null for lack of novelty

11. FROM BLUE TO A MODO MIO and RIVO
A Modo Mio was developed in 2006 and launched in 2007
The capsules were entirely conceived by Lavazza. Machines’ core components are designed and engineered by Lavazza and licensed to authorized manufacturers
Lavazza entered the competition in the home use market at the time dominated by players such as Nestlé (Nespresso), Philips-Douwe Egberts (Senseo) and Kraft (Tassimo) with its own espresso system
The Lavazza A Modo Mio compatible capsules were launched at the end of 2011, soon after the expiry of the Monodor patent
Such capsules do not employ the patented technology which covers the A Modo Mio system. Lavazza therefore decided not to sue the manufacturer of these capsules
An enhanced version of this technology was launched in 2012 in US in partnership with Keurig-Green Mountain, US leader in this market

12. Lavazza Espresso Point – A Look-alike case

13. A MODO MIO COMPATIBLE. LAVAZZA vs. GIMOKA
Look-alike
Trademark’s use

14. A MODO MIO COMPATIBLE CAPSULES
Passing off at Venditalia fair in 2014

15. CONCLUSION AND SOME QUESTIONS
Enforcement of patent rights is not always effective due to the considerable uncertainty of courts’ interpretations
The attitude of the courts is generally in favor of the compatible products
The Nespresso vs. Vergnano case set important rules concerning the use of another party’s trademarks
The ‘Nespresso case’: innovation for consumers’ benefit or abuse?
In the meantime in the US market …
Keurig announced its “2.0 technology” whereby the machines will have a “reader” to recognize and brew only original or licensed capsules
Nespresso launched the Vertuoline system, based on a barcode scanning technology to recognize the single capsules
What about market protection?

16. Thank You! Marco Braida Senior Counsel – IP and Technology
Luigi Lavazza S.p.A.
C.so Novara Turin, Italy