Article: “The limits of 3D trademarks in the food industry: a comprehensive analysis of the Mila v. Müller yoghurt container litigation

The Court of Rome has recently issued a landmark ruling declaring the nullity of Molkerei Alois Müller GmbH & Co. KG's 3D trademark for its “Müller Mix” square dual-compartment yoghurt container. The decision resolves a protracted legal battle initiated by Latte Montagna Alto Adige Società Agricola Cooperativa, better known under its trade name Mila, outlining the limits on trademarking functional packaging and the invalidating power of prior use.

Introduction: the strategic significance of 3D shape protection

In the landscape of the European food and beverage sector, intellectual property and trademark strategy often extends beyond mere logos and brand names, to the very shape of product packaging.

Three-dimensional trademarks have emerged as a potent competitive tool, allowing market leaders like Müller to seek perpetual protection for the shapes of their products, thereby creating significant entry barriers. This strategic pursuit, however, frequently clashes with the fundamental legal principle of "free availability," which provides that shapes dictated by technical necessity or those that have become industry standards must remain in the public domain to prevent the creation of perpetual monopolies over technical solutions.

The litigation between Müller and Mila serves as a landmark case study in this conflict. At the heart of the dispute is the square dual-compartment yoghurt pot - a design allowing consumers to flip a smaller triangular chamber into a larger one in order to mix the condiments with the yoghurt.

This dispute is anchored in a complex procedural history across multiple Italian jurisdictions, where Mila’s strategic intervention in lawsuits initiated by Müller against Mila’s clients met and overcame Müller's aggressive infringement claims, with a final decision on the merits that invalidated Müller’s 3D trademark.

Procedural landscape: from interim injunctions to the Rome decision

The procedural timeline reveals a multi-front strategy involving parallel actions in Rome, Venice and Milan.

Following reports of undue pressure exercised by Müller towards Mila’s retail customers to drop Mila’s private label yoghurt packaged in a square dual-compartment container, Mila filed a nullity action in 2021 before the Court of Rome, targeting Müller’s Italian 3D Trademark No. 302019000031937, registered in 2019.

In response, Müller started interim infringement actions against two large retail chains distributing Mila’s private label items, packaged in the same square dual-compartment container, seeking injunctions against the sale of Mila’s yoghurt container for infringement of its registered 3D trademark before the Courts of Milan and Venice.

Mila intervened in those proceedings in support of its clients, filing non infringement claims also on the grounds of trademark invalidity, and both Courts ruled in favour of Mila and the other defendants.

The Court of Venice found prima facie nullity of Müller’s trademark for lack of novelty, as Mila had introduced a square dual-compartment yoghurt container over 10 years earlier than Müller and over 20 years earlier than its trademark registration (Court of Venice decision of 30 April 2022), while the Court of Milan found prima facie nullity of Müller’s trademark on absolute grounds due to the exclusively functional shape of the yoghurt container (Court of Milan decision of 11 January 2024).

While these interim orders provided immediate relief for Mila’s clients, the core of the legal debate remained centred on the invalidity action on the merits pending before the Court of Rome.

The core of the Rome decision of 22 July 2026

The Court of Rome’s decision correctly ascertained the invalidity of Müller's 3D trademark, with a declaration of nullity resting on two grounds:

• Nullity for technical functionality (Art. 9 CPI): The Court found the trademark invalid under Article 9, paragraph 1, letter b) of the Italian Industrial Property Code (CPI). The Court found that the dual-chamber design, featuring a flexible hinge, is a technical solution necessary to separate yoghurt from the solid ingredients and facilitate mixing by folding the smaller compartment over the larger one. The Court confirmed, in line with the case law of the European Court of Justice, that the existence of alternative shapes does not override this absolute ground. Crucially, the Court also ruled that secondary meaning cannot overcome nullity arguments based on functionality, as the general interest in freely using technical solutions prevails over the trademark holder’s private interest in preserving its monopoly.
• Lack of novelty and prior use (Art. 12 CPI): Independent of the functionality doctrine, the trademark was also declared invalid due to lack of novelty at the time of its 2019 filing. Mila successfully proved extensive prior commercialization of the square dual-compartment container in Italy since 1987, a decade before Müller's entry into the Italian market. This prior use, executed both under Mila's own brands and via private label supply contracts to major large-scale dairy producers and retail chains, constituted a generalized prior use that deprived Müller's trademark of novelty.

Consequently, the Court declared the Italian trademark null and void and ordered the Italian Patent and Trademark Office (UIBM) to annotate the nullity in the Register. To protect Mila's commercial network, the court also enjoined Müller from exercising further legal threats against Mila and its clients.

The functionality barrier, Art. 9(1)(b) CPI and the relevant CJEU Doctrine

The most significant legal hurdle for Müller’s 3D trademark was found to be the "Functionality Doctrine" under Art. 9(1)(b) CPI, descending from the implementation of Art. 4(1)(e)(ii) of Dir. (EU) 2015/2436 (substantially equivalent to Art. 7(1)(e) of Reg. (EU) 2017/1001).

This doctrine prevents companies from using trademark law to gain perpetual monopolies over useful technical solutions.

In the Milan Order, followed by the Court of Rome decision, the Courts applied the "Philips/Lego" doctrine established by the CJEU. This doctrine holds that if the essential functional characteristics of a shape are attributable solely to a technical result, the shape is unregistrable as a trademark. The Courts rejected Müller’s argument founded on the existence of alternative shapes granting the same technical effects, ruling that the availability of other designs (e.g. round or octagonal) does not overcome the absolute ground for functionality of the specific shape in question.

Furthermore, the absolute ground due to functionality cannot be overcome by an acquired "secondary meaning".

Despite Müller having commissioned a market survey and having claimed significant consumer association of the shape of the container with the Müller brand, stemming from its position of market leader, the Court ruled that “the mental association that consumers might make between the shape of the pot and the product’s origin is not sufficient to remedy the sign’s inherent invalidity, as the general interest in the free availability of technical solutions must in any event take precedence over the expectations of the innovator”.

Final takeaway

For IP strategists the lesson is clear: distinctive protection must be sought in arbitrary design elements, as functional and standardized shapes are legally reserved for the public domain.

Article published in today’s Lexology newsletter written by our senior associate Ettore Fassina.