3D-printing: is the trademark owner missing out?

On our website we have often written about 3D-printing (or the professional variant ‘additive manufacturing’). For example, we previously focused on the position of the patent proprietor. In this item we will discuss the position of the trademark proprietor.

A trademark proprietor has the exclusive right to use a ‘sign’, on the basis of national law, such as the Benelux Convention on Intellectual Property (‘BCIP’) for the Benelux or international regulations such as Regulation (EU) 2017/1001 on the EU trade mark (‘EU trade mark regulation’).

A sign can be two-dimensional or three-dimensional, provided that it can function as a trademark (such as, respectively, a logo or shape trademark).

For example, not only the Coca Cola logo, but also the Coca Cola bottle is such a sign. Another example is a phone case for an iPhone, that can be printed with the Apple logo or an adaptation thereof.

The development of 3D-printing can put trademark rights as we currently know it under pressure, mainly because of the ease with which a scan can be made and – on the basis of that scan – a product and / or logo can be copied and distributed.

In this article, we will discuss the possibilities for a trademark proprietor to act against:

  • printing private individuals;
  • printing companies;
  • print shops that print a product or component on assignment;
  • platforms that print a product or component on order;
  • intermediaries who bring supply and demand together;
  • someone who shares online an STL file of a product or component; and
  • platforms on which someone posts an STL file of a product or component.

Company and private individual

Printing companies

The production method of counterfeit products is actually not relevant from a legal point of view. If a company imitates products with 3D-printing, this is in principle not allowed without the permission of the proprietor. It then makes no difference whether it concerns patents, design rights, copyrights or trademark rights.

Printing private individuals

Legally more interesting is that anyone with a 3D-printer can in principle easily copy a product themselves. Scanners are gradually getting better and smart software makes it possible to turn a scan into a printable file (such as STL). In terms of price, metal printing is not within reach for private individuals yet, but plastic is.

Printing consumers can also provide their 3D-printer to others against payment. Intermediaries such as 3D Hubs have responded to this development. This development blurs the dividing line between private and business: the consumer becomes prosumer.

This makes it difficult for proprietors – and therefore also trademark proprietors – to keep control of their exclusive rights.

Can a trademark holder take action against a private individual who 3D-prints a product at home?

The trademark legislation contains four grounds for taking action against trademark use. Three of these grounds stipulate as a condition that the use of the trademark takes place for commercial purposes. In the EU, the use of a trademark by private individuals in the private sphere – so without a commercial purpose – is in principle not covered by this (the ‘private use exception’).

Nevertheless, it is imaginable that in certain situations action can be taken against private use. It must then be trademark use whereby unjustified advantage is drawn from the distinctive character or reputation of the trademark, or whereby the distinctive character or reputation of the trademark is impaired. Consider, for example, a private individual who for himself imitated a pair of sneakers with the well-known Nike ‘swoosh’, but with a bad 3D-printer, unsuitable materials or an inaccurate digital print file (STL). By subsequently wearing the sneakers, the reputation of the trademark of Nike could be compromised. It is conceivable that such use can be tackled by Nike.

And against a private individual who 3D-prints a product on order and against payment?

Printing for someone else against payment – whether or not through an intermediary – would in principle constitute commercial trademark use. After all, it is then more or less business-like and the private individual will no longer be able to hide behind the private use exception.

Online sharing of files

In the situation described above, a trademark proprietor may miss out on income. But it really becomes bothersome when the digital print file of a protected shape trademark or a product with the trademark is shared via the internet. However, in the literature online sharing of a digital print file is not regarded as ‘use of a sign’ in the sense of the BCIP. Currently, there is no case law on this yet. The digital print file can be regarded as the instruction booklet for the 3D-printer and is therefore essential for 3D-printing.

Can a trademark holder take action against a private individual who shares the digital print file of his shape trademark or product with his trademark online?

Even if at some point it could be established that the digital print file can be considered a sign, a private individual who shares it online can in principle invoke the private use exception. This would of course be different when the private individual asks for a fee for the online sharing. Perhaps – by sharing the digital print file – a private individual does enable trademark infringement by another person and thus may still considered to act unlawfully towards a trademark proprietor.

Print shops, intermediaries and platforms

Currently, professional, high-quality 3D-printers are not affordable for the public at large yet. Those who do not have their own 3D-printer or a 3D-printer with the correct qualifications can print the desired products (or have them printed) at workplaces (such as FabLab), print shops or online platforms.

Can a trademark proprietor take action against print shops if he discovers that his shape trademark or a product with his trademark is being printed there?

Yes, applying a trademark and offering products with a trademark on it are examples of actions that are exclusively reserved for a trademark proprietor. So, assuming that print shops operate commercially, there may be trademark infringement. This of course also applies if print shops print on demand for private individuals.

Can a trademark holder act against online intermediaries that bring together supply and demand?

A well-known service provider of this kind is 3D Hubs. They establish contact between someone who wants to have something 3D-printed and someone in the neighbourhood who has a suitable 3D-printer. For the rest, 3D Hubs stays completely out of the transaction that goes directly via the requester and the provider.

In so far as the online intermediary only brings together supply and demand, it can in principle not be held liable if the printed products infringe on intellectual property rights, including trademark rights. In principle, the intermediary will then be able to rely on the exemption from liability for ‘passive’ online service providers. But that can be different, especially if the intermediary has a more active involvement with the exchanged files or the delivery of the final result. Or if the intermediary somehow knows or needs to know that there is or will be an infringement.

Can a proprietor address online platforms?

Not all platforms have the same method of working. For example, some platforms only make it possible to share digital print files (such as Thingiverse), while other platforms actually commit itself to 3D-printing ‘on demand’ (such as Shapeways).

As long as the digital print file is not regarded as a sign, under trademark law a trademark proprietor will not be able to act against platforms such as Thingiverse. Nonetheless, such platforms possibly act unlawfully by ultimately enabling trademark infringement. In principle, this applies to other intellectual property rights equally.

This is different with platforms such as Shapeways. After all, they actually create a physical product. If a platform prints a product that is protected as a shape trademark or that features the logo and / or word mark of someone else, the trademark proprietor can in principle take action against this, also against the platform itself. Given their active role, these types of platforms will in principle not be able to rely on the exemption from liability for ‘passive’ online service providers. This means that these platforms are responsible and possibly even liable for the content (such as digital print files) that is on it. That will certainly be the case if these platforms do not immediately remove the unlawful information once they have been notified.

What does this mean for the position of the trademark proprietor?

Intellectual property rights including trademark rights are challenged by disruptive innovations such as 3D-printing. Private individuals do now get away with 3D-printing thanks to the private use exception and also commercial production is difficult to tackle because the digital print file is not covered by trademark law (yet).

Notice and Take Down

Although there are barely any legal cases, worldwide many take down-requests are submitted daily to platforms. That underlines the importance of a Notice and Take Down-procedure.

For online platforms and other intermediaries, it is important to set up a proper Notice and Take Down-procedure and to actually execute it to prevent liability. The 3D Clearing House offers a solution to outsource the Notice and Take Down-procedure and the handling of claims.

Questions?

Do you want to know more about the legal pitfalls of 3D-printing? Or would you like more information about the 3D Clearing House?

Then please feel free to contact Ernst-Jan Louwers or Lisa Molenaars.

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