The Intersection of 3D Printing and Trademark Law

Author:Nina Natalia Baranowska
Position:LL.M. with Concentration in Law and Technology (University of Ottawa), Researcher at the Civil Law Institute at the Faculty of Law, Administration and Economics, University of Wroclaw
Pages:251-265
SUMMARY

The paper discusses the possible impact of 3D printing technology on a trademark protection system and argues that, despite some obstacles, selling certificated 3D-printable files by companies can be a reasonable new approach in order to face up to the changes brought about by this new technology. 3D printing (three-dimensional printing, counter crafting), perceived by some as a disruptive... (see full summary)

 
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The Intersection of 3D Printing and Trademark Law
2018
251
3
The Intersection of 3D Printing
and Trademark Law
by Nina Natalia Baranowska*
© 2018 Nina Natalia Baranowska
Everybody may disseminate this ar ticle by electronic m eans and make it available for downloa d under the terms and
conditions of the Digital P eer Publishing Licence (DPPL). A copy of the license text may be obtain ed at http://nbn-resolving.
de/urn:nbn:de:0009-dppl-v3-en8.
Recommended citation: Nina Nata lia Baranowska, The Intersection of 3 D Printing and Trademark Law, 9 (2018) JIPIT EC 251
para 1.
Keywords: 3D printing; trademark law; trademark protection; disruptive technology; counterfeiting; registration
of shapes; platforms; certificated files
dissemination of manufacturing process, participa-
tion of hobbyists, the role of CAD files, the possibility
of introducing modifications into a file, and the world-
wide scope of 3D printing based on the Internet con-
nectivity may have an impact on trademark protec-
tion to a certain extent. The paper analyzes the cases
of this impact and suggests possible solutions: sell-
ing 3D-printable certificated files by trademark own-
ers; price regulation; and better educational programs
on counterfeit goods. From the hard law perspective,
the solution may lie in establishing clear rules of lia-
bility for intermediary online platforms.
Abstract: The paper discusses the possible
impact of 3D printing technology on a trademark pro-
tection system and argues that, despite some obsta-
cles, selling certificated 3D-printable files by compa-
nies can be a reasonable new approach in order to
face up to the changes brought about by this new
technology. 3D printing (three-dimensional printing,
counter crafting), perceived by some as a disruptive
technology, is an additive manufacturing technique
to create objects by joining or printing layer upon
layer of material based on digital models. Certain fea-
tures of this technology such as democratization and
A. Introduction
1 “If you are not excited by 3-D printing it is because
you are not thinking big enough”.1 3D printing is
perceived by many authors as a cause of “A Third
Industrial Revolution” or at least a signicant
factor in revolutionizing the world around us.2 But
* LL.M. with Concentration in Law and Technology
(University of Ottawa), Researcher at the Civil Law Institute
at the Faculty of Law, Administration and Economics,
University of Wroclaw.
1 Linda Federico-O’Murchu, “How 3-D printing will radically
change the world”, (11 May 2014), online: CNBC
www.cnbc.com/2014/05/09/will-3-d-technology-radically-
change-the-world.html>.
2 See among others: Christopher Barnatt, “3D Printing: The
Next Industrial Revolution”, online: Explain Future
explainingthefuture.com/3dprinting.html>; Kent Roberts,
“The Rise of the 3D Printer: Hype or Revolution?”, (25
September 2014), online: AtlanticNet
net/blog/the-rise-of-the-3d-printer-hype-or-revolution/>;
Filemon Schoffer, “Is 3D Printing The Next Industrial
Revolution?” in TechCrunch (2016); Sam Rega, “How 3D
what makes this technology powerful enough to
compare it with the impact of a steam engine and
the Industrial Revolution in the XIX century, or the
Internet and Digital Revolution? One may say that 3D
printing is just an additive manufacturing technique
to create objects by printing layers of material based
on digital models. Although some predictions about
3D printing seem to be exaggerated, this technology
is clearly a new phase of technological development,
which is transforming our thinking of home printers
and putting the manufacturing process onto a more
advanced level.
Printing Will Revolutionize Our World”, online: Bus Insid
revolution-is-here-3d-printing-2014-8>; “3D printing:
not yet a new industrial revolution, but its impact will be
huge”, The Guardian (10 December 2013), online:
www.theguardian.com/commentisfree/2013/dec/11/3d-
printing-not-yet-a-new-industrial-revolution-but-its-
impact-will-be-huge>; “A third industrial revolution”, The
Economist (21 April 2012), online:
com/node/21552901>.
2018
Nina Natalia Baranowska
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2
It has to be emphasized that no technology exists
in a vacuum. Quite the contrary, almost each new
technological advance has a signicant impact on
society, market and, what is important for this paper
– legal regulations. 3D printing is not an exception
here. As many commentators observe, 3D printing
will force legal scholars and also policy-makers to
rethink existing legal concepts within contract law
(e.g. the role of prosumers and online platforms, the
denition of a “producer”, etc.)
3
and tort law (e.g.
dening a liable person, proving a causal link, etc.).4
3
This paper focuses on the intersection of 3D printing
and trademark law and examines the boundaries of
the impact of 3D printing on the existing trademark
law system. As the starting point (Section B), 3D
printing is presented as a disruptive technology,
which could change the way people currently
produce and use products, and which characteristic
features could have an impact on trademark law.
Among those features are: freedom, easiness, and
low cost of designing and printing objects. They lead
to democratization and facilitation of the production
process and in fact may change or even eliminate
the role of the brand as an “intermediary” between
a producer and a consumer.
4
Next, Section C briey describes the traditional
role of trademark, which is the protection of the
products’ identication with a particular quality
source by using recognizable signs or expressions.
For further deliberations, it is important to highlight
two purposes of trademark protection – “consumer
protection” and “company incentives”. Those
remarks will help to understand the impact of 3D
printing on the trademark law system.
5
Section D indicates two major areas where the
relation between 3D printing and trademark
law collides. First of all, the problem whether
three-dimensional objects can be registered
as trademarks. The greater possibilities of 3D
printing will also raise several questions regarding
registering three-dimensional objects (shapes) as
a trademark, including the role of the trademark
law system, the growing scope of registrable subject
matter, the reasons for registration of shapes, the
enforcement of trademark protection, if the 3D
printing would become the norm. Secondly, the
problem of whether and to what extent the certain
elements of 3D printing such as democratization
and dissemination of manufacturing process,
participation of hobbyists, the role of CAD le, the
3 See for example: Thierry Rayna, Ludmila Striukova & John
Darlington, “Co-creation and user innovation: The role
of online 3D printing platforms” (2015) 37 J Eng Technol
Manag 90.
4 See for example: Patrick J Comerford & Erik P Belt, “3DP,
AM, 3DS and product liability.(3D printing, additive
manufacturing)” (2015) 55:4 St Clara Law Rev 821.
possibility of introducing modications into a CAD
le, and the worldwide scope of 3D printing based on
the Internet access could possibly interfere with the
trademark law system. In that section, it is stressed
that the private reproduction of a trademark is
generally not an infringement, which means that
the essence of 3D printing, embodied in a homemade
production, will not directly and radically affect the
core of trademark protection. The current scope
of trademark law thus excludes from trademark
protection many potential threats to a company’s
brand due to a commercially-oriented approach
and a blurred line between commercial and non-
commercial uses. The section also indicates how
realistic it is for 3D printing to become a serious
risk for companies from the product sectors. It is
explained that the series production is still a cheaper
way to produce goods and that the technical and
practical limits caused by 3D printing will not play
important role in many categories of counterfeited
goods. Therefore, the problem of using 3D printing
for counterfeiting purposes is currently limited to
the certain number of products – mainly luxury
goods, which are relatively easily accessible through
3D printing and protable for counterfeiters. Even
if the trademark protection may only apply when
commercial uses take place and to only some
categories of items, 3D printing opens up further
possibilities of counterfeiting goods and enables
anyone to become a counterfeiter at his/her home
and to take commercial advantages of 3D prints.
The section also discusses the cases of printing only
the trademark, printing the whole item, to which
the trademark is attached, and printing the whole
item without the trademark, as well as the blurred
line between a producer and a user and the line
between commercial and non-commercial activities.
Next, the role of a CAD le is explained and based
on that the section makes a prediction that in the
counterfeiting process the les would be offered
online by professional counterfeiters, rather than
produced by each individual. Finally, the section
presents further problems including the status of a
CAD le as a product, enforcing companies’ rights,
and territorial limitations of trademarks.
6 Section E proposes some solutions including a new
approach of companies in order to face up to the
changes brought about by this new technology,
taking as a reference point the Lessig’s concept
of modalities consisting of hard law regulations,
market regulations, social norms and “architecture”.
I claim that in the area of trademark law, hard law
regulation might not be an adequate response to
problems presented by 3D printing, mainly because
of limited abilities of enforcing rights and high
litigation costs. Therefore, the idea of selling 3D
printed certicated les by trademark owners will be
discussed. Although this idea has some disadvantages
(such as losing control over a product and its quality,
The Intersection of 3D Printing and Trademark Law
2018
253
3
increasing potential liability for products, confusing
consumers, etc.), this solution seems a reasonable
and more exible approach to adjust companies
to a new 3D printing reality. Next, I show that the
price regulation will be of key importance. I also
comment on the necessity of education - a society
which is well-informed about detrimental effects
of using counterfeit goods can make a wise and
conscious decision and even generate social norms
regarding whether it wants to contribute to the
counterfeit industry. The last solution will be to
establish clear rules of liability for intermediary
online platforms where it is possible to upload and
download unauthorized designs of a trademarked
good or trademark itself.
7
The following deliberations are not based on a
specic legal system, so that the general problems of
trademark law as a system of protection companies
(and to some extent consumers) can be presented
in a model approach. The discussion is, however,
supported by references to EU law, the Agreement on
Trade-Related Aspects of Intellectual Property Rights
(TRIPS), and some examples from the U.S. system.
B. 3D Printing as a Disruptive
Technology
8
3D printing (three-dimensional printing, counter
crafting) is perceived as one of the new disruptive
technologies. Jeremy Rifkin, an American economic
and social theorist, in his book from 1995 titled
The End of Work: The Decline of the Global Labor
Force and the Dawn of the Post-Market Era”5 used
the ambiguous term “disruptive technologies” to
describe new technological phenomena which,
on the one hand, have a huge economic potential,
and on the other hand replace previous solutions,
causing old businesses and professions to disappear.
Indeed, new technologies can quickly reorganize
the world where we live and work and create a new
order with new range of products, services, but also
threats. A report by the McKinsey Global Institute
from May 2013 titled Disruptive technologies:
Advances that will transform life, business, and the global
economy” indicated 3D printing as one of the twelve new
technologies which by 2025 will demonstrate the
greatest commercial potential and exert the largest
impact on social and economic changes.6 According
5 Jeremy Rifkin, The end of work: the decline of the global
labor force and the dawn of the post-market era (New York:
GPPutnam’s Sons, 1995).
6 McKinsey Global Institute, “Disruptive technologies:
Advances that will transform life, business, and the global
economy”, (May 2013), online:
com/business-functions/digital-mckinsey/our-insights/
disruptive-technologies>. These technologies are: mobile
Internet, automation of knowledge work, Internet of
to the report, the illustrative pools of economic value
that could be impacted by 3D printing include $11
trillion of global manufacturing GDP and $85 billion
revenue from global toy sales.7
9
3D printing is dened as additive manufacturing
techniques to create objects by joining or printing
layer upon layer of material based on digital models.
8
Additive manufacturing (AM) covers many specic
processes which vary in the materials and machine
technologies. A report on Standard Terminology for
Additive Manufacturing Technologies, published
by the American Society for Testing and Materials
(ASTM), initially by the group ASTM F42 – Additive
Manufacturing in 2012 and then developed by
the Subcommittee: F42.91 in 2015, indicates 7
categories of additive manufacturing, which are:
VAT Photopolymerisation, Material Jetting, Binder Jetting,
Material Extrusion, Powder Bed Fusion, Sheet Lamination,
Directed Energy Deposition.9
10 Additive manufacturing was invented in the 1980s
and was initially used for “rapid prototyping” of
mechanical models in plastic,
10
and for industrial
use. Before 3D printing technology, prototypes were
usually made in different geographical areas like
India or China so that it required the involvement of
time and human and nancial resources.11 The base
of 3D printing technology is well-known computer
aided design programs (CAD), which evolved from
the two-dimensional space digital drafting.12 The
Things, cloud, advanced robotics, autonomous and near-
autonomous vehicles, next-generation genomics, energy
storage, 3D printing, advanced materials, advanced oil and
gas exploration and recovery, renewable energy.
7 Ibid at 5.
8 See for example: Michael Weinberg, It Will Be Awesome If They
Don’t Screw it Up: 3D Printing, Intellectual Property, and the Fight
Over the Next Great Disruptive Technology (Public Knowledge,
2010) at 2; Lisa Harouni, “A primer on 3D printing”,
(November 2011), online: TEDTalk
talks/lisa_harouni_a_primer_on_3d_printing>.
9 American Society for Testing and Materials (ASTM), Group
F42 Additive Manufacturing Technologies, developed
by Subcommittee F4291, “Standard Terminology for
Additive Manufacturing Technologies”, (2012), online:
PAGES/F2792.htm>. See more Ben Redwood, “Additive
Manufacturing Technologies: An Overview”, online:
3D Hubs
additive-manufacturing-technologies-overview>;
Additive Manufacturing Research Group, Loughborough
University, “The 7 categories of Additive Manufacturing”,
online:
the7categoriesofadditivemanufacturing/>.
10 Barnatt, supra note 2.
11 Juho Vesanto, “Saving Resources by Prototyping with 3D
Printing – A Lamplight Case Study”, (30 September 2013),
online: 3D Print Ind
saving-resources-prototyping-3d-printing-lamplight-case-
study-17629/>.
12 See “CAD Software”, online:
2018
Nina Natalia Baranowska
254
3
years of research, and continuous improvement of
technological processes has transformed the AM
from an expensive and inaccessible technology to
easier and cheaper to acquire and use.13 The recent
expiry of patent rights over some of the technologies
invented in the 1980s, including 3D printing, has
sparked consumers’ interest in the potential of 3D
printing, which is perceived by many as the symbol
of the shift towards individualism and creativity.14
11 3D printing allows for the production of day-to-day
consumer products (furniture, clothes,
15
footwear,
16
sports gear,17 kitchen implements, ofce materials,
tools, toys, decorative elements),18 but can also be
applied in mass-scale production and professional
use (automotive industry, robotics, architecture,
construction, etc).
19
3D printing technology can also
be applied in the food industry.20 This technology is
solutions/cad-software>.
13 See Gil Laroya, “3D Printing Can Turn You Into a Designer”,
(16 December 2013), online: Hufngton Post
www.hufngtonpost.com/gil-laroya/3d-printing-
design_b_4440463.html>.
14 Hod Lipson & Melba Kurman, Fabricated: The New World of 3D
Printing (New York: John Wiley & Sons, 2013) at 22, 103; See
more: Chris Anderson, Makers: the new industrial revolution
(London: Random House Business Books, 2013).
15 Rachel Hennessey, “3D Printing Hits The Fashion World”, (7
August 2013), online: Forbes
rachelhennessey/2013/08/07/3-d-printed-clothes-could-
be-the-next-big-thing-to-hit-fashion/>.
16 Michael Fitzgerald, “With 3-D Printing, the Shoe Really
Fits”, (15 May 2013), online: MIT Sloan Manag Rev
sloanreview.mit.edu/article/with-3-d-printing-the-shoe-
really-ts/>.
17 Richard Lai, “EADS’s Airbike is a 3D-printed nylon bicycle,
actually looks rather decent”, (3 September 2011), online:
Engadget
airbike-is-a-3d-printed-nylon-bicycle-actually-looks-rat/>.
18 See for example: Steven Kurutz, “A Factory on Your Kitchen
Counter”, N Y Times (20 February 2013), online:
www.nytimes.com/2013/02/21/garden/the-3-d-printer-
may-be-the-home-appliance-of-the-future.html>; Dan
Nosowitz, “A Smooth, 3-D-Printed, Multicolored, High-
Resolution Vase”, (19 July 2013), online: Pop Sci
www.popsci.com/technology/article/2013-07/smooth-3-d-
printed-vase-has-four-times-resolution-makerbot>.
19 Michelle Starr, “Dubai unveils world’s rst 3D-printed ofce
building”, (25 May 2016), online: CNET
com/news/dubai-unveils-worlds-rst-3d-printed-ofce-
building/>; Francesca Perry, “Chinese rm creates ‘world’s
tallest 3D-printed building’”, The Guardian (31 January
2015), online:
jan/31/chinese-rm-creates-worlds-tallest-3d-printed-
building>; Clare Scott, “Saudi Arabian Government Meets
With WinSun to Discuss 3D Printing as Part of a Plan to Build
1.5 Million Homes in Five Years”, (3 August 2016), online:
3DPrint.com
winsun-housing/>.
20 Aaron Souppouris, “NASA is funding a 3D food printer,
and it’ll start with pizza”, (21 May 2013), online: The
Verge
nasa-funding-3d-food-printer-pizza>; Bianca Bosker, “3D
Printers Could Actually Make Donuts Healthy”, Hufngton
already irreplaceable in medicine, especially in the
eld of replacement and reconstructive surgery.21
Alongside printing of dental implants, prosthetics
and hearing aids,
22
research is presently focusing on
bioprinting. Bioprinting opens up new possibilities
in the scope of innovative transplantology methods
thanks to the possibility of recreating organs and
tissue from human cells using 3D technology.23
12
Signicantly, 3D printing can be a key factor in future
commercial application,24 but it can also provide
individuals with further possibilities to print objects
in their own homes and thus become a symbol of
the “do-it-yourself” movement (“DIY”).25 Lipson
and Kurman point out that 3D printing requires less
operator skills which, along with a high production
capacity, make “3D printers ideal for home use”.26
Taking into account the current developments of
3D printing, it is probable that 3D printers will one
day be used in the majority of private homes, like
computers and 2D printers.27 So far, however, 3D
printers intended for home use have not reached
the level to print sophisticated forms in materials
other than plastic.
Post (24 April 2013), online:
com/2013/04/24/3d-printed-food_n_3148598.html>.
21 Sean Gallagher, “Doctors save baby’s life with 3D-printed
tracheal implant”, (24 May 2013), online: Ars Tech
arstechnica.com/information-technology/2013/05/
doctors-save-babys-life-with-3d-printed-tracheal-
implant/>; Carol Torgan, “3-D Printing of Working Bionic
Ears”, (13 May 2015), online: Natl Inst Health NIH
www.nih.gov/news-events/nih-research-matters/3-d-
printing-working-bionic-ears>.
22 Ian Birrell, “3D-printed prosthetic limbs: the next revolution
in medicine”, (19 February 2017), online: The Guardian
feb/19/3d-printed-prosthetic-limbs-revolution-in-
medicine>.
23 Liat Clark, “Bioengineer: the heart is one of the easiest
organs to bioprint, we’ll do it in a decade”, (21 November
2013), online: WIRED UK
article/3d-printed-whole-heart>.
24 Kevin Maney, “3-D printing could break China’s economic
stranglehold and make manufacturing great again”, (2
April 2016), online: Newsweek
com/2016/04/15/3d-hubs-3-d-printers-manufacturing-
china-443350.html>.
25 See for example: Rhys Jones et al, “RepRap - the Replicating
Rapid Prototyper” (2011) 29:1 Robotica 177; See also the idea
of Maker Movement: “The Maker Movement Manifesto”, PR
Newswire (2013); Amanda Scardamaglia, “Flashpoints in 3D
Printing and Trade Mark Law” (2014) 23 J Law Inf Sci 30 at
34.
26 See ten principles indicated by autors in Chapter 2: Lipson &
Kurman, supra note 14.
27 Compare: Daniel O’Connor, “A 3D Printer in Every Home:
Redux”, (11 October 2016), online: TCT Mag
tctmagazine.com/api/content/8908b0b0-8fcc-11e6-bee4-
0a161eac8f79/>; Lipson & Kurman, supra note 14 at 20–22.
The Intersection of 3D Printing and Trademark Law
2018
255
3
13
Nonetheless, the scope of the application of 3D
printing technology is expanding, and constant
processes of improvement, application of new
materials, and a reduction in prices of the materials
and printers28 are facilitating the popularity and
accessibility of this technology. 3D printing is also
being promoted by the biggest tech companies
such as Amazon and Microsoft who are selling 3D
printers29 and creating more efcient working
environments with this technology.30
14 Many commentators see 3D printing not only as a
new manufacturing paradigm of the XXI century,
but also as a trigger for the changes in society, the
environment, trade, the market, entrepreneurship,
and of course law.31 For example, according to the
McKinsey Report, 3D printing technology could be
benecial for small companies by providing them
with technological tools so that they can rapidly
enter into the market and compete on a more
signicant scale.32 On the other hand, as the use of
3D printing technology becomes more common,
ethical
33
and legal concerns
34
are increasingly raised.
15
From the legal perspective, 3D printing raises
many questions in different areas of law, including
contract law (e.g. it challenges the role of prosumers
and the denition of a “producer”) and tort law
(e.g. who, and to what extent, is liable for damages
caused by the 3D printed object, if defects can arise
from the initial design, the code, the printer, the
material, or in the improper use of the printer and/
or materials). 3D printing also has an impact on
Intellectual Property Law: patent law,
35
copyright
28 Lipson & Kurman, supra note 14 at 84.
29 Ian Paul, “Amazon quietly launches complete 3D printing
store”, (14 June 2013), online: PCWorld
pcworld.com/article/2042076/amazon-quietly-launches-
complete-3d-printing-store.html>.
30 Michael Endler, “Microsoft Touts Windows 8.1 3-D Printing”,
(8 August 2013), online: InformationWeek
informationweek.com/hardware/peripherals/microsoft-
touts-windows-81-3-d-printing/240159700>.
31 Lucas S Osborn, “Regulating three-dimensional printing:
the converging worlds of bits and atoms” (2014) 51:2 San
Diego Law Rev 553 at 560.
32 McKinsey Global Institute, supra note 6 at 19.
33 Compare: Jasper L Tran, “To bioprint or not to bioprint”
(2016) 17:1 N C J Law Technol 123.; Andy Greenberg,
“This Is The World’s First Entirely 3D-Printed Gun”,
(3 May 2013), online: Forbes
sites/andygreenberg/2013/05/03/this-is-the-worlds-
rst-entirely-3d-printed-gun-photos/>; Janessa Rivera
& Rob van der Meulen, “Gartner Says Uses of 3D Printing
Will Ignite Major Debate on Ethics and Regulation”, (29
January 2014), online: Gartner
newsroom/id/2658315>.
34 See for example: Nora Freeman Engstronm, “3-D Printing
and Product Liability: Identifying the Obstacles” (2013) 162
Univ Pa Law Rev Online 35.
35 See for example: Daniel Harris Brean, “Asserting patents to
combat infringement via 3D printing: it’s no ‘use’” (2013)
law,36 and trademark law which will be discussed
in this paper.
C. The Traditional Role of
Trademark Law
16
The trademark law system was created in order
to ensure that products or services that are
identiable through particular qualities, would
have a recognizable sign or expression attributed
to it to protect this identication.37 According
to the World Intellectual Property Organization,
trademark is “a sign capable of distinguishing the
goods or services of one enterprise from those of
other enterprises”.38 This denition is however
somewhat a shortcut. It should be noted that the
sign itself is not yet a trademark, but only the
element of the trademark concept. The sign has
to be associated with the product in a way that
creates a complex relation in the public perception
between the sign and the product. The core of the
trademark is thus the relation between the sign and
the product, recognized by consumers. This relation
can be created by the constant usage of the sign in
relation to certain products or by indicating the list
of products to which the sign will be related in a
registration form. In practice, though, the notion
“trademark” is used just to determine the sign.39
Nowadays, trademarks can take different forms such
as pictures, logos, designs, colors, melodies, scents,
store layout, menu, etc.40
17
It means that the primary role of the trademark
is to determine the origin (source) of the product.
The particular trademark leads to the certain
public perception of the product, which allows to
individualize the product based on its “commercial”
source. What is more, this “commercial” source
most frequently creates a consumer perception of
the quality of the product or its certain features.
23:3 Fordham Intellect Prop Media Entertain Law J 771.
36 See among others: S Craig, “Protection for printing: An
analysis of copyright protection for 3D printing” (2017)
2017:1 Univ Ill Law Rev 307; Julie Ahrens, “3D Printing and
Copyright” (2013) 17:3 Copyr New Media Law Newsl 3.
37 See 15 U.S. Code § 1127 (2012)
38 “Trademarks”, online: World Intellect Prop Organ
www.wipo.int/trademarks/en>.
39 See for example Article 15 of the Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS).
40 See for example: Vanessa Mackie, “Scent marks: the future
of Canadian trade-mark law” (2005) 18:3 Intellect Prop J 417;
José Tizón Mirza, “CJEU expands trade mark law to include
the design of a store layout: Apple Inc v Deutsches Patent-
und Markenamt (German Patent and Trade Mark Ofce)”
(2014) 36:12 Eur Intellect Prop Rev 813; Richard J Berman,
“Color me bad: a new solution to the debate over color
trademark registration” (1994) 63:1 George Wash Law Rev
111.
2018
Nina Natalia Baranowska
256
3
Sometimes the trademark itself can be identied
as a symbol of certain characteristics; for example,
wealth, social position, tness and healthy lifestyle.
In this sense, trademark plays a quality and
advertisement role.
18
Generally speaking, trademark law has two
purposes. The rst is consumer protection, with
the goal to prevent consumers from the confusion
of the producer of the good, which usually leads to
the certain perception of its quality.41 For example
if the consumer buys a pair of Nike shoes, he/she
connects in mind the logo and the shoes with the
specic producer and then with the certain quality
or, more generally, with the symbol of an active
lifestyle. However, some commentators claim that
this concept is currently declining in importance.42
The second purpose concerns company incentives.
Protection guaranteed by trademark law, which
allows companies to control the use of the mark,
encourages them to invest in a brand and thus in
the higher quality and probably higher prestige.43
D. The Impact of 3d Printing
Technology on the
Trademark Law System
19
There are two major areas where the relation between
3D printing and trademark law collides. The rst
one concerns registering three-dimensional objects
as trademarks. Secondly, certain elements of 3D
printing such as democratization of manufacturing
process may pose some threats on the trademark
law system.
I. Shape as a Trademark
20
According to the Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS),44
41 Dan L Burk, “Trademark doctrines for global electronic
commerce” (1998) 49:4 S C Law Rev 695. At 699-700.
42 Felix S Cohen, “Transcendental Nonsense and the Functional
Approach” (1935) 35:6 Columbia Law Rev 809 at 815–818.
43 Osborn, supra note 31 at 582. See also: Qualitex Co. v.
Jacobson Prods. Co., 514 U.S. 159, 164 (1995) and Park ‘N Fly,
Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985).
44 1869 UNTS 299, 33 ILM 1197 (1994). The TRIPS Agreement
is Annex 1C of the Marrakesh Agreement, signed in
Marrakesh, Morocco on 15 April 1994 and came into effect
on 1 January 1995. Currently TRIPS Agreement was adopted
by 162 parties (see more:
en/other_treaties/parties.jsp?treaty_id=231&group_
id=22>). The TRIPS Agreement establishes a minimum
standard, which means that the signatories countries can
adopt more protective rules, but they cannot fall below
set requirements. See WTO website: “WTO | intellectual
shapes are a registrable subject matter. Under
Article 15(1) TRIPS, a trademark can be constituted
by any sign, or any combination of signs, capable
of distinguishing the goods or services of one
undertaking from those of other undertakings.
Such signs, in particular words including personal
names, letters, numerals, gurative elements and
combinations of colors as well as any combination
of such signs, shall be eligible for registration as
trademarks. Although, shape marks are not listed,
they could be generally accepted as registrable marks,
taking into account that the list of signs is of non-
exhaustive character. However, many jurisdictions
impose some limitations on registering shape marks.
According to Article 4 (1)(e) of the Directive (EU)
2015/2436 of the European Parliament and of the
Council of 16 December 2015 to approximate the
laws of the Member States relating to trade marks,45
signs which consist exclusively of: (i) the shape, or
another characteristic, which results from the nature
of the goods themselves; (ii) the shape, or another
characteristic, of goods which is necessary to obtain
a technical result; and (iii) the shape, or another
characteristic, which gives substantial value to the
goods, should not be registered. It means that the
functional shape cannot be registered as a trademark
under EU law, which signicantly limits the scope of
application of trademark protection over 3D prints.
The essence of majority of the 3D prints (including
toys, clothing, footwear, decorative elements) is,
in fact, to serve functional purposes – for those 3D
prints the shape is crucial for use. Recently, Nestle lost
a battle before the Court of Justice of the European
Union (CJEU) for registering its Kit Kat’s four nger
shape because the shape was functional and not
distinctive.46 Similarly, Lego’s three-dimensional
red eight-stud brick shape could not be registered
as a trademark, because the shape of the brick is
necessary to obtain a technical result.47 Restrictions
property - overview of TRIPS Agreement”, online:
www.wto.org/english/tratop_e/trips_e/intel2_e.htm>.
45 OJ L 336, 23.12.2015.
46 Case C215/14, Société des Produits Nestlé SA v Cadbury
UK Ltd (16 September 2015) ECLI:EU:C:2015:604. See more:
John Murray Brown, “KitKat can be copied as Nestlé loses
trademark protection”, (15 December 2016), online: Ir
Times
and-food/kitkat-can-be-copied-as-nestl%C3%A9-loses-
trademark-protection-1.2907537>.
47 Case C48/09 P, , Lego Juris A/S v Ofce for Harmonisation in
the Internal Market (Trade Marks and Designs) (OHIM),(14
September 2010) ECLI:EU:C:2010:516. See more: CNN Wire
Staff, “LEGO brick not a trademark, court rules - CNN.
com”, (15 September 2010), online:
com/2010/BUSINESS/09/15/eu.lego.trademark/index.
html>. On the other hand, CJEU ruled that Lego’s mini three-
dimensional gures can be classed as a protected trademark
shapes. Case T396/14 Best-Lock (Europe) Ltd v Ofce for
Harmonisation in the Internal Market (Trade Marks and
Designs) (OHIM) 16 June 2015, ECLI:EU:T:2015:379.
See more: Sarah Butler, “Lego blocks legal bid to remove
The Intersection of 3D Printing and Trademark Law
2018
257
3
surrounding the registration of shape trademarks
exist also under the U.S. law system.48 According
to the functionality doctrine, the shape eligible to
register cannot be essential to the use or purpose
of the product and cannot affect the cost or quality
of the product.49 If the shape does not have utility
it can be registered, if it is distinctive. However, the
lack of utility will be applied in the minority of the
cases, while many of the 3D prints will be functional
shapes – excluded from the trademark registration.
Among that minority of the cases where a 3D print
is distinctive but does not serve a functional purpose
it may be registerable.
21
Furthermore, taking into account the essence of
trademark protection, it should be pointed out that
granting trademark protection does not mean that
the trademark owner has an exclusive and unlimited
right to the sign. Trademark owners have a right to
use the sign as their trademark, which means with
the connection to the origin of the product. In this
minority of cases when a shape can be registered
as a trademark, using a shape by a consumer for
his/her personal, descriptive or aesthetic reason,
infringement of the shape trademark will not take
place.50
22 Nonetheless, the greater possibilities of 3D printing
poses, several questions concerning the registration
of a trademark consisting of three-dimensional
objects (shapes), including the role of the trademark
law system, the growing scope of registerable subject
matter, the reasons for the registration of shapes,
and the enforcement of trademark protection
given to shapes if the 3D printing would become
the norm.51
II. The Impact of Certain Elements
of 3D Printing Technology on
the Trademark Law System
23
This section examines the potential impact of
certain features of 3D printing on trademark law,
and the way it can inuence the protection of
both companies and consumers. As a consequence,
companies will have to rethink their business models
trademark protection for its mini-gures”, (16 June 2015),
online: The Guardian
lifeandstyle/2015/jun/16/lego-trademark-protection-
mini-gures-european-court-justice-best-lock>.
48 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164-
165 (1995).
49 Scardamaglia, supra note 25 at 39.
50 Ibid at 41.
51 Scardamaglia, supra note 25 at 44–45; See more: Mark A
Lemley, “IP in a World Without Scarcity” (2015) 90 N Y Univ
Law Rev 460.
to protect their brands.
1. Democratization of Production Process
24
The main feature of 3D printing is liberalization
of the production process. Almost anyone can
become a manufacturer, carrying out their own
projects or producing items on the basis of designs
supplied by others and made accessible via the
Internet. The manufacturing process itself is made
easier, and it is possible to skip over some stages
of production, which means that manufacturing is
greatly facilitated. Creation of a product requires
only the proper code, materials, and the printer.
Allowing private entities to “print” objects blurs the
line between the producer and the consumer. This,
in turn, leads to considerable threats of printing (in
practice – manufacturing) fake trademarked goods
by private entities in their homes.
2. Dissemination of Production Process:
Participation of Hobbyists
25
Along with liberalization, the production process
is disseminated. The process may involve many
independent entities: the designer of the code;
the designer of the printer; the operator of the
printer; the supplier of materials; and the seller,
who can produce the object him/herself, or can
create the product in a printing shop and then sell
it. It means that the design, production, and the
distribution of products can be “democratized”.52
What is more, many of the 3D printer owners use
previously generated computer projects and designs
which are available on the Internet. The possibility
of sharing models and projects creates the new
online ecosystem,
53
which makes it more difcult
for companies to control the use of their products
and trademarks. Moreover, taking into account
that 3D printing can be a home process without a
professional third party, the possibility of producing
fake goods is moved from well-organized criminal
groups to the domesticity of regular users.54
26
3D printing is also a very precise technology that
enables the production of objects in great resolutions.
By using a layer-by-layer method, it is now possible
to create objects whose production would be
impossible with the use of traditional methods.
52 McKinsey Global Institute, supra note 6 at 16.
53 Ibid at 14.
54 Compare: Richard Nieva, “Ashes to ashes, peer to peer: An
oral history of Napster”, (5 September 2013), online: Fortune
peer-an-oral-history-of-napster/>.
2018
Nina Natalia Baranowska
258
3
Home-made 3D printed goods can be of excellent
quality, so that it would be difcult to distinguish
fake trademarked goods from the originals. One
can conclude that this technology might generally
improve the quality of faked goods.
3. The Role of CAD File
27
It is also common practice to freely share a CAD
le over the Internet through online platforms,
e-mails, cloud technology, etc. Many of the platforms
are used by hobbyists who upload, download and
exchange les for free.
4. Modifications
28 Another hugely important feature of 3D printing is
the possibility of modifying a CAD le, which is the
source of a 3D printout. The point of 3D printing is
not only “printing” (adding) layer-by-layer to create
three-dimensional objects. What is important is that
this technology enables the users to download the
le, copy it and make modications. Both a 3D printer
and a CAD (digital) le play the essential roles in the
printing process. As in the case of 2D printing, in
which it is important to have a le (text or drawing
le) that is sent to the printer and printed on a
piece of paper, in 3D printing it is necessary to have
a project that is then “printed” in a spatial form.
The difference lies in the higher technological level
of the project (more details, higher precision in the
case of multiple-element objects, greater knowledge
about the software).
29
Having a digital le and a suitable computer program
enables, in turn, to modify the project. The user
basically has two paths leading to the nal result in
the form of a printed object. Firstly, having a CAD
le and program at disposal, the user can create his/
her own project. However, this requires some design
skills. Nevertheless, the project can be created by
a special software through scanning a physically
existing object that will be then transformed into
a digital le.
55
Secondly, the user can nd already
prepared projects on the Internet.56 In both cases, a
signicant issue from the perspective of trademark
law is the ability to modify the project. Ready-to-go
projects can be personalized by adding, changing or
deleting individual items.
55 See online tutorials:
id/3d-Scan-Anything-Using-Just-a-Camera/>,
www.3dhubs.com/talk/t/3d-scanning-what-technologies-
to-use-for-3d-printing/1743>.
56 For example: .
5. Worldwide Scope
30 “Zipping” a physical object into a digital le opens
new possibilities for creating objects. By providing
the possibility of producing objects from a digital
le, 3D printing seems to create a bridge between
the digital and the physical world. A digital le also
allows one to send, receive, and exchange les freely.
The worldwide access to the Internet enables people
to share any number of CAD les between users in
different parts of the world.57
31
How can these characteristics inuence
trademark law? Firstly, it has to be emphasized that
at least under EU law, the private reproduction of a
trademark is not an infringement. This means that
the essence of 3D printing, embodied in a homemade
production, will not directly and radically affect
the core of trademark protection. Nonetheless,
3D printing possibilities may have an impact on
companies’ interests. At this point, it is necessary
to distinguish between three different scenarios:
the individual prints the fake trademarked goods
for his/her personal use, he/she distributes it to
public, or sells it. In the rst case, as mentioned
above, an infringement will generally not take place.
Printing trademarked goods for personal use (e.g.
printing fake trademarked kitchen equipment) will
not infringe the rights of the brand because it is
not related to selling, distributing or advertising.58
However, even if individuals produce goods for
personal use, they can distribute (e.g. wear or use)
them in public, which may lead to some confusion.
Osborn, the American author, observes the problem
of post-sale confusion related to 3D printing. Post-
sale confusion occurs not at the moment of purchase,
but later when the others see someone wearing or
using the goods and then get confused about the
origin of the products.59 He stresses that without
the post-sale confusion, “the purchase or use of
pirated goods by a knowing buyer would not infringe
because they were not confused as to the source”.60
While printing the object, individuals have complete
knowledge of the origin of the object and that the
object does not come from the brand owner source61
57 Ibid at 560.
58 Compare 15 U.S. Code § 11 14(l)(a) (2012). See Art. 20 (1)
Trade-marks Act R.S.C., 1985, c. T-13 (Canada).
59 Osborn, supra note 31 at 583; See more: Michael J Allen, “The
scope of confusion actionable under federal trademark
law: who must be confused and when?” (1991) 26:2 Wake
For Law Rev 321 at 325–326; Anne M McCarthy, “The post-
sale confusion doctrine: why the general public should be
included in the likelihood of confusion inquiry” (1999) 67:6
Fordham Law Rev 3337 at 3348–3351.
60 Osborn, supra note 31 at 583. See more: Anne M McCarthy,
“The post-sale confusion doctrine: why the general public
should be included in the likelihood of confusion inquiry”
(1999) 67:6 Fordham Law Rev 3337 at 3348–3351.
61 Weinberg, supra note 8 at 8.
The Intersection of 3D Printing and Trademark Law
2018
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3
in cases of fake trademarked goods. However, taking
into account the general public protection, in the
American doctrine, McCarthy argues that “the use
of a trademark likely to cause confusion among
the general public in a post-sale context should
be actionable under federal trademark law”.62 This
statement may apply to the case of fake trademarked
printed goods which are distributed among the
general public. Under EU law it is, however,
debatable whether the risk of confusion occurs when
the trademark has not been commercially exploited.
It would mean that only when the printed good has
been sold and distributed by the individual, there
might be infringement of the trademark. Even in
this case, trademark owners would probably have
to prove that the particular individual printed the
trademarked good and that it was used in public.63
This, in turn, can be extremely difcult to achieve
and in turn renders the trademark protection
impossible to enforce.
32 Narrowing down the trademark protection only to
the cases when the trademark has been commercially
exploited is a signicant limitation of the role of
trademark system, especially in the light of new
technological developments. As explained above,
the potential of 3D printing is fullled by individuals
printing objects by themselves. This, however, may
bring piracy into private homes. While one or two
printed fake trademarked goods are probably not
enough to jeopardize the interests of the company,
the growing interest in 3D printing may adversely
affect the brand’s power. Some authors use the
example of the impact of Napster on a music scene.
64
33 3D printing not only changes the role of the brand
as an “intermediary” between a producer and its
consumers, but also raises questions about the line
between a producer and a consumer. At what point
does the individual, who reprints objects using his/
her 3D printer, become a professional? Does he/
she have to sell 3D printed objects? How should we
classify the individual who sells these objects only
occasionally? How should we classify the individual
who distributes these objects for free or only for
a symbolic payment? What if he/she does it on a
massive scale? These and similar questions lead to a
problem that in the case of 3D printing, the current
form of trademark protection scope excludes
many potential threats to the company’s brand
form trademark protection due to a commercially-
oriented exploitation and the blurred lines of
62 McCarthy, “The post-sale confusion doctrine: why the
general public should be included in the likelihood of
confusion inquiry” (1999) 67:6 Fordham Law Rev 3337
at 3338, 3340.
63 Osborn, supra note 31 at 583.
64 Richard Nieva, “Ashes to Ashes, Peer to Peer: An Oral History
of Napster”, CNN MONEY (Sept. 5, 2013, 5:00 AM),
tech.fortune.cnn.com/2013/09/05/napsteroral-history>.
commercial uses. The problem will probably grow
in the future along with further developments of
3D printing.
34
Even if the trademark protection may only apply
when commercial uses take place, 3D printing might
create and exacerbate problems of trademark’s
infringement. 3D printing opens up further
possibilities of counterfeiting goods and enables
anyone to become a counterfeiter at his/her own
home and take commercial advantages of 3D
prints. One may say that this is basically the same
problem that already exists today. What 3D printing
changes is that counterfeiting is becoming easier,
faster, more accessible and relatively cheaper (if
the price of 3D printers and materials continues to
drop). Moreover, the use of CAD les in the online
environment and empowering regular users with
sophisticated tools of creating objects change the
context of counterfeiting. 3D printing may increase
the incentive for regular users to create copies of
trademarked goods and to start making prot off
them.
35
The current stage of 3D printing development
addresses a practical question concerning how
realistic it is for 3D printing to become a serious
risk for companies from the product sectors and to
threaten the brand’s interests. There are two issues
that have to be taken into account. First of all, the
main practical obstacle for 3D printing becoming the
major way of producing marked goods is the cost.
A series production of marked goods (elements,
components, etc.) is still a cheaper way for companies
to produce goods than using 3D printing technology.
As long as the costs of 3D printing remain higher
than series production, companies will probably
not switch to 3D printing on a regular basis. It may
very well be that the series production will remain
the mainstream, whereas 3D printing will occupy
only margin and niche markets limited to hobbyists’
activities or, on the other hand, highly specialized
sectors such as the medical market (e.g. hearing aid
and prosthetic production). In that case, the brand
infringements through 3D printing will remain at
a margin. Nonetheless, it may only be a matter of
time before this technology will reach the price
level that will turn it into cost-effective method of
producing goods. Well-known examples from the
past include copy machines and 2D printers. If that
happens, the new scheme for the functioning of the
production process will have to be adapted to further
development. It is also possible that in the future, a
consumer would buy a design(model) rather than
a complete object. Those predictions may seem
visionary, but history has many lessons to teach us
about the impact of innovations.
2018
Nina Natalia Baranowska
260
3
36
The second practical consideration regarding 3D
printing and trademark law is that 3D printing will
not play an important role in many categories of
counterfeited goods. One can mention for example,
food, cosmetics, and cleaning articles, which consist
of ingredients that home printers are not capable of
using. Even if it was theoretically possible to print
such products, realistically none of the consumers
would do this if he/she could buy the same products
for a few Euros in the store next door. Again, the
price and costs are of key importance in the
practical usage of 3D printing. Moreover, the current
development of this technology concentrates
mainly on printing in certain type of materials,
such as plastic or some textiles. It means that 3D
printing is currently available only for producing
the limited types of goods. This, in turn, means that
for trademark considerations reprinting only limited
goods could create potential for brand infringement.
Therefore, the possibility of counterfeit trademarked
goods through 3D printing will concern mainly
luxury goods such as watches, handbags, decorative
elements, which are relatively accessible through 3D
printing and protable for counterfeiters.
37
It is also important to distinguish between three
types of printing: printing only the trademark;
printing the whole item, to which the trademark
is attached; and printing the whole item without
the trademark. 3D printing enables all of these
possibilities. As mentioned above, trademarks do
not protect products as such, but the reference to
a certain commercial source, which is connected
with a company’s good image and quality. Therefore,
reprinting products does not infringe the trademark,
unless the trademark is afxed to them. From the
practical point of view, if a user decided to print
the object for personal use, he/she would probably
not bother to attach the trademark to it, as they
would be more interested in the functional (or
decorative) side of the object. Again, the luxury
goods will be an exception here. Of course, when
the shape was registered as the trademark or
when the object consisted of engraved signs which
already appeared during the printing process, this
could lead to infringement. However, registering
functional shapes is hardly possible under existing
law and only commercial use would constitute
infringement. Furthermore, 3D printing not only
enables one to simply copy goods, but also provides
the unlimited possibilities of editing les and makes
possible the uncontrollable and easy modication of
trademarked goods and a trademark itself. Users can
for example personalize and customize a le, as well
as create fusion or parodies of trademarked goods.65
Thus, the user now has the practical possibility to
easily remove the trademarked name or logo from
products before printing (which, however, does
65 Osborn, supra note 31 at 585–586.
not infringe the trademark as such) or, what is
probably more detrimental from the perspective of
the company, the trademark (e.g. logo, sign) can be
added to the product, which does not come from
the trademark owner company. For example, the
sign “LV” (standing for the Louis Vuitton brand) can
be attached to a no name handbag, which in turn
might be sold as an original. As 3D printing can
precisely recreate existing products or trademarks,
it can easily transform into a new method for
counterfeiting goods. Counterfeiting is not a new
problem, but now it can be done by anyone at home
with a 3D printer and software.
38 One of the features of 3D printing which facilitates
counterfeiting is that 3D printing is based on
a dataset of an object – a CAD le. The online
environment enables users to share and exchange
les, and to nd complete projects of different items
on online platforms – many of them are available to
download for free. A CAD le can be produced by
an individual and then released online. Producing
a dataset requires some design skills (if it is created
from the beginning by the individual) or a more or
less sophisticated scanner technology (scanning
options can be offered by 3D printers). The easiness
of nding many complete projects online supports
the argument that the les will be offered online by
professional counterfeiters rather than produced
by each individual. Professional counterfeiters
are to be understood as persons who counterfeit
goods for dishonest or illegal purposes and for
commercial reasons. They can offer a dataset free
of charge or on payment which will still be cheaper
than purchasing an original product. However,
further developments of reprinting and scanning
technology (more effective and cheaper solutions)
may result in more individuals being able to create
a dataset. This also shows the more basic problem
of 3D printing – this technology empowers regular
users with greater tools that, if applied dishonestly,
can transform them into counterfeiters and facilitate
the brand’s infringement. The fact that the sender
does not lose his/her possession over the object
while sending a le causes additional loss of a
company’s control over its trademark.66 Moreover,
3D printing blurs the line between a producer and
a user, as well as the line between commercial and
non-commercial activities. As mentioned above, in
order to constitute the infringement, the trademark
protection requires “use” of the trademark in the
commercial sense. In the case of 3D printing it might
be difcult to determine when a CAD le or a 3D
printed trademarked good is used in commerce. The
judicial interpretation based on the factual situation
of the specic case will probably play a key role.67
66 Scardamaglia, supra note 25 at 33.
67 Case US, Wickard v. Filbum, 317 U.S. 111, 128-29 (1942).
The Intersection of 3D Printing and Trademark Law
2018
261
3
39 Taking into account only a CAD le, which includes
a project of a trademarked good, the question also
arises whether the le can be perceived as a product.
It refers to a lively discussion, mainly in the area of
product liability law, on the denition of product
and the possibility of considering a digital le as a
product. Currently many legal scholars, contrary
to hard law rules, agree to that interpretation.68
However, a trademark will not be used every time
with the same digital le. Lucas Osborne highlights
that it might happen that a le with a trademark
and a design of the object will be separated, but a
user will be able to combine those two les and the
embedded trademark on the product.69
40
Even if the problem of counterfeited reprinted
goods may still seem marginal (limited to certain
types of 3D printed items commercially exploited),
it might be a growing trend along with the further
development of 3D printing. It is probably a matter
of time, when companies might start losing their
control over the use of their trademarks. In that
scenario, companies will also face practical problems
with enforcing their rights and for most of them
enforcement of trademark protection may not
be protable. The costs of a court procedure are
generally high, especially when the infringement
of the trademark was committed by a single entity
acting commercially. Even if the company decides to
le a case, in practice there will be many obstacles
with proving the infringement of trademark and
even nding the infringer on the Internet. In the
case of a single infringement of trademark, it may
not be lucrative for companies to protect their rights
in a court, whereas easiness, speed, and low costs
of creating objects in 3D printing technology will
probably increase the problem of infringement.
41
Moreover, the scope of trademark protection
in the case of a registered trademark is, in
principle, territorially limited. When we take
into account that Internet connectivity enables
us to share the les freely, territorial limitation
of trademark might not be a sufcient solution.
The international harmonization in terms of a
uniform standard of trademark protection and the
facilitation of registering trademarks denitely
bring benets to international companies. The
Madrid Arrangement Concerning the International
Registration of Marks and the Madrid Protocol
for the International Registration of Marks (the
two treaties forming the so-called Madrid System
administered by the International Bureau of the
68 See for example on the ground of product liability: Max
Loubser & Elspeth Reid, Product liability in South Africa
(Claremont: Juta, 2012) at 81; Contrary M A (Michael A )
Jones et al, Clerk & Lindsell on torts, twenty-rst edition.
ed, Common law library (London: Sweet & Maxwell, 2014)
at 847.
69 Osborn, supra note 31 at 585.
World Intellectual Property Organization (WIPO)
in Geneva) enable the “extension” of a trademark
application made in one country to other countries,
selected in the application which are the members
of the Madrid Union.70 The Madrid Union now has
98 members, which cover 114 countries and 80% of
world trade.71 This system improves the scope of
trademark protection, but practical problems may
arise with the enforcement of trademark owner
rights.
E. Optimal Solutions
42 The above considerations show that the issue of the
relationship between 3D printing and trademark law
is multi-threaded. Even though it is limited only to
certain problems (and goods), the growing pace of
technological development will probably deepen
this interaction. In the literature, a comparison of
the current technological state of 3D printing and
its impact on IP law can be found within the music
market and the emergence of mp3 les and platforms
such as Napster.72 The signicant difference between
those examples lies in the possibility of modifying
a CAD le, which was not the case with mp3 les.
Simply put, even if users exchanged mp3 les or
illegally copied them, Beyoncé’s songs would remain
Beyoncé’s songs (even when copyright is infringed).
3D printing allows for a lot of interference in both
the trademark itself and the trademarked good
by manipulating the CAD le (removing or adding
trademarks, reprinting whole items).
43
In search of solutions in connection with the
development of new technologies, including 3D
technology, it is worth referring to the proposed
concept by Lessig. According to Lessig, there are
four modalities that have an impact on regulating
technology: legal norms, social norms, markets, and
“architecture”.73 It means that hard law regulations
are not the only factor that can provide adequate
responses to the threats posed by 3D printing.
Lessig claims that social norms can be enforced by a
community; the market regulates people’s behavior
through prices; the “architecture” of the physical
and digital world has an impact on how technology
is used – the “architecture” of technology can have
70 “Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks”, online: World Intellect
Prop Organ
index.html>.
71 “Members of the Madrid Union”, online: World Intellect Prop
Organ . See
the list of members:
www/treaties/en/documents/pdf/madrid_marks.pdf>.
72 Ibid at 603, 612; Scardamaglia, supra note 25 at 37.
73 Lawrence Lessig, “The Law of the Horse: What cyberlaw
might teach” (1999) 113:2 Harv Law Rev 501 at 507 ff.
2018
Nina Natalia Baranowska
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3
an impact on people’s behavior, for example if the
technology is well-designed and user-friendly it can
build people’s trust and encourage them to use it
more often.74
44
How can these modalities refer to the case of
3D printing and trademark law? In the case of
trademark protection, a lot depends on a company’s
policy. Strategic management and decision making
directly inuence the regulatory possibilities of
“architecture” and market – for example, how
much the company is motivated to protect their
trademarks, what precautions it takes to protect
them, how it regulates products’ prices, etc.
Probably, in the case of trademark and 3D printing
possibilities, hard law regulations will not be an
effective solution. Even if the regulations were
stricter, companies would have to use a lot of power
to enforce them, for example by “chasing” hobbyists
and single private entities who infringe trademark
use. Introducing stricter regulations, for example
through tougher criminal penalties, would probably
not lead to satisfactory results, if again there will
be no tools to enforce them. Moreover, it might
be against the principle of justice if a hobbyist was
treated at the same way as well-organized criminal
groups.
45
Therefore, the following parts will focus on different
solutions; specically, selling certicated 3D printable
les by companies, and hard law regulations focused
on liability of online intermediaries that facilitate
the sending of les that can infringe trademark
rights.
I. Certificated 3D Printable Files
46
The rst solution is that trademark owners
should create their own certicated 3D-printable
les.
75
Offering certicated les for sale would be
a way to adjust their business model to the new
technological and “3D-prinatable” reality. The
examples from the music and lm industry show
that their stubborn resistance to necessary changes,
as well as looking for solutions only among existing
legal rules (for example suing traders and users),
and lack of alternative to peer-to-peer platforms
do not guarantee an effective level of protection
(both for companies and consumers).76 To meet
the expectations of consumers and to follow the
74 Lawrence Lessig, “The Law of the Horse: What cyberlaw
might teach” (1999) 113:2 Harv Law Rev 501 at 509.
75 Scardamaglia, supra note 25 at 52–53; Osborn, supra note 31
at 585–586.
76 Bob Lefsetz, “Lefsetz Letter » Blog Archive » Losing The
Press War”, (28 November 2005), online:
com/wordpress/2005/11/28/238/>,
wordpress/2005/11/28/238/>.
technological trends, companies may also decide to
provide users with the possibility to make changes,
personalize and customize a le. This approach may
help to keep the pace of technological trends and
provide companies with the income, taking into
account that some consumers would rather buy
certicated les, if their price is reasonable or if
consumers obtain additional services and benets
(e.g. access to special platforms). Selling certicated
les is also protable for companies because a
company does not have to produce the whole
product and in turn pay the full production costs
and overheads (materials, labor force, storage costs,
etc.). This proposal will be explained below in detail,
considering all the advantages and disadvantages
and taking into Lessig’s concept of “architecture” as
regulatory means. The starting point in assessing this
solution would be a question: why would companies
be interested in authorizing users to print and use
their trademarks, if they did not have control over
the quality of the product?
47 Selling authorized CAD les with a product design
and trademark can potentially lead to a loss of control
over a production process, the materials used, and
the quality of workmanship. 3D printing technology
allows users to apply different materials, which may
not be the material used by the trademark owner in
its production line. As a consequence, 3D printed and
trademarked goods could not maintain the required
level of quality and the trademarked good could
convey a poor reputation for the line of products
or the company itself. Therefore, the efforts of the
company which has invested in the brand could fail.
48 What is more, computer software enables users to
make changes in the digital design: color scheme,
shape, size, etc. It is also easy to copy the content
of the le, including the protected logo or design
and use it in another le. Distributing les could
also potentially increase the number of counterfeit
products.
49
The next considerable disadvantage to this proposal
concerns consumer protection. The buyer of the
certicated le can print the object and use it for
personal use only or can start selling the 3D printed
goods. Both scenarios can have harmful effect not
only for the companies, but also for the public. As
mentioned above, the role of the trademark is to
prevent consumers from the confusion of the origin
of the good. If the trademarked good no longer
gives the consumer clear information regarding
the source of the product, the trademark law system
starts losing its gist. Confusion can occur when the
buyer uses the 3D-printed object for personal use
(regardless of the fact, whether he/she uses it in
public, e.g. shoes, or not, e.g. kitchen gear), as well
as when he/she sells 3D-printed and trademarked
goods, which can infringe trademark. Buyers
The Intersection of 3D Printing and Trademark Law
2018
263
3
purchasing 3D-printed but trademarked goods may
wrongly believe that they are buying a product
from the trademark owner. Even if 3D-printed and
trademarked goods are intended for personal use, in
the event of its damage, the public may associate the
trademark with low quality, which will have adverse
consequences for the trademark owner.
50
The problem of increasing the risk of liability for
injuries caused by defective products (product
liability) is not directly connected with the
trademark law system, but can have impact on
the company’s functioning, business strategies
and the general image of the brand. According to
a general rule of product liability law, liable entity
is a producer. Although it might be problematic
to indicate a producer (a company which sells 3D
les or a person who prints them), the company
distributing certicated les can be involved in a
causal link and thus be jointly and severally liable
(under contribution or recourse rights).
51
Despite the indicated doubts regarding the
possibility of selling certicated CAD les, attention
should be given to the advantages. The wider
possibilities of printing trademarked products at
home can completely change the business models.
These possibilities are based on the assumption that
3D printing will be more accessible for ordinary
people. First of all, if 3D printers are becoming more
widespread and companies will allow individuals to
use certicated les, the counterfeit market might
lose its signicance. It would not make sense to buy
counterfeit goods, if there is the possibility to print
a trademarked good from a certicated le for a
good price. Together with the le, a company may
sell additional services and provide their users with
benets (e.g. access to an online platform, software,
updates). The price of the certicated le and
business decisions of companies are thus a crucial
element of this proposal.
52 Secondly, thanks to 3D technology and certicated
le sales opportunities, companies would not have
to use international outsourcing.77 Currently, a large
part of production costs include the labor force.
In order to decrease those costs, big companies
are moving their business to China or Indonesia.
78
3D printing technology switches to distributed
manufacturing and allows more local actors to play
a role in the production process. Selling certicated
les for regular users could thus cut additional costs
of producing goods, if the buyers are going to print
(manufacture) objects by themselves. Thirdly, selling
certicated les may encourage more people to
wear trademarked goods, which can be perceived
as a good advertisement of a product. And last but
77 Federico-O’Murchu, supra note 1.
78 Maney, supra note 24.
not least, selling certicated les could be the way
for companies to increase their income. Taking
into account the current rapid development of new
technologies, especially those which are Internet-
based, it is nearly impossible to control all users
who can print out the fake trademarked goods
anyway. By selling certicated les, companies can
generate an additional income – not selling les will
remain the status quo in which users get les for free
(through hobbyist platforms, scanning software,
modifying existing les, sharing les, etc.). In the
future, companies and trademark owners may also
decide to completely replace their production of pre-
made goods and sell only printable les.
53
The above-mentioned scenario might sound too
visionary; in practice, it might occur that by selling
certicated 3D les, companies would lose control
over their trademarks and the quality over products
and 3D printing technology would be used to produce
more counterfeit goods. To avoid further problems,
if companies decide to sell their trademarks and
designs to individuals, certain “architectural”
elements of the les should be considered as a way
to prevent the detrimental effects of releasing a
trademark. The idea behind the sale of CAD les is
that the le can be customized. However, to protect
a company’s interests, the number and the scope of
changes or modications might be limited. Similarly,
in order to maintain the adequate level of quality of
the products, the le can be restricted only to use
certain types of materials to print certain products.
Currently, home printers usually use only basic
materials such as plastic; however, it is likely that in
a few years individuals will gain more technological
possibilities to print in more sophisticated materials.
Moreover, 3D printed trademarked goods could have
some special characteristics so that the public can
recognize that the particular product was 3D printed
and not manufactured by a trademark owner. In an
attempt to maintain control of the quality of the
products, les can be programmed to send data to
companies, so that they could analyze how many
products have been printed, as well as the location
of the print. However, this possibility raises sensitive
problems related to privacy protection.
II. Market Rules: Price Policy
54
Along with architectural changes, market rules
might be also an important factor. The market can
regulate people’s behaviors through the price of
the product.79 Trademarked goods are usually more
expensive than no-name brands. It can be part of the
marketing strategy (paying more can be perceived
as something more luxurious or of a higher quality)
79 Lessig, supra note 73.
2018
Nina Natalia Baranowska
264
3
or it can be justied by the costs invested by a
company to create a well-known brand (higher
quality, advertising, etc.). Lowering the price of
certicated les may prompt more people to start
buying original trademarked les.
III. Social Norms: Education
55 Social norms in this case basically refer to the users’
perception regarding whether or not it is wrong to
use counterfeit goods (goods produced by the third
party with embedded trademark) in general.80 A
report of the Organisation for Economic Co-operation
and Development (OECD) and the European Union’s
Intellectual Property Ofce published on 18 April
2016, “Trade in Counterfeit and Pirated Goods:
Mapping the Economic Impact” estimates the
value of imported fake goods worldwide at USD 461
billion in 2013.81 As noted in the report, the trade in
counterfeit and pirated goods hit the hardest the US,
Italian and French brands and is often proceeded
by organized criminal groups.82 3D printing can
contribute to further growth of fake goods, although
not all of them. The counterfeit market is now
expanding its scope from items like shoes or bags, to
more sophisticated goods such as pharmaceuticals.
83
3D technology can facilitate the production of
certain fake trademarked goods both by private
entities and criminal groups. However, regardless
of the entity that produces fake goods, the important
factor is the reaction of the public and the personal
will for buying counterfeit goods. Often the reason
for buying or producing counterfeit goods is the
lack of knowledge. A society which is well-informed
about the detrimental effects of using counterfeit
goods can make more conscious decisions and even
generate social norms concerning whether it wants
to contribute to the counterfeiting industry.
80 “Dan Ariely Explains the Problem With Fake Fashion: Part
One”, (3 July 2012), online: High Low
com/2012/07/dan-ariely-explains-the-particular-problem-
with-fake-fashion-part-one/>.
81 “Trade in Counterfeit and Pirated Goods: Mapping
the Economic Impact”, online: OECD ILibrary
www.keepeek.com/Digital-Asset-Management/
oecd/governance/trade-in-counterfeit-and-pirated-
goods_9789264252653-en>; “Global trade in fake goods
worth nearly half a trillion dollars a year - OECD & EUIPO
- OECD”, online:
trade-in-fake-goods-worth-nearly-half-a-trillion-dollars-a-
year.htm>.
82 note 80.
83 Steve Hargreaves, “Counterfeit goods market is booming
and becoming more dangerous”, (27 September 2012),
online: CNNMoney
news/economy/counterfeit-goods/index.html>.
IV. The Liability for Intermediary
Online Platforms
56 The last proposed solution is regulating the liability
of intermediary online platforms, where CAD les
are uploaded and downloaded. First of all, it is worth
mentioning a recent case, Stichting Brein v Ziggo
BV, XS4ALL Internet BV (Case C610/15)84, which was
resolved before the Court of Justice of the European
Union. The referring court raises “the matter of the
liability of operators of indexing sites of peer-to-peer
networks for copyright infringements committed
in the context of the use of those networks. Can
those operators themselves be regarded as being
the originators of those infringements, which would
mean they are directly liable (rst question)? Or, even
if they are not directly liable, can an order be made
blocking access to their websites, which, as I shall
explain below, requires a form of indirect liability
(second question)?”85 The Court of Justice stated that
“the concept of ‘communication to the public’, within
the meaning of Article 3(1) of Directive 2001/29,
must be interpreted as covering, in circumstances
such as those at issue in the main proceedings, the
making available and management, on the internet,
of a sharing platform which, by means of indexation
of metadata referring to protected works and the
provision of a search engine, allows users of that
platform to locate those works and to share them
in the context of a peer-to-peer network” (para 48).
57
Although, the case is based on copyright and
Directive 2001/29/EC,86 not on trademark law, the
concept of online operators’ liability from this case
could be transferred to online platforms where it
is possible to upload and download unauthorized
designs of a trademarked good or trademark itself.
58 The liability of online platforms (in general) is now
widely discussed in the EU,87 which is the expected
direction of further legislation. The new liability
regime for online providers is also discussed under
the proposal for a Directive on copyright in the
Digital Single Market.88 In June 2018, the European
Parliament voted in favor of new liability regimes
under Article 13 of the proposal, which makes online
84 Stichting Brein v Ziggo BV, XS4ALL Internet BV (Case
C610/15), ECLI:EU:C:2017:99.
85 Ibid.
86 Directive 2001/29/EC of the European Parliament and of
the Council of 22 May 2001 on the harmonisation of certain
aspects of copyright and related rights in the information
society, OJ L 167, 22.6.2001, p. 10–19.
87 “Online Platforms”, online: Eur Comm
eu/digital-single-market/en/online-platforms-digital-
single-market>.
88 Proposal for a directive on copyright in the Digital Single
Market, COM/2016/0593 nal - 2016/0280 (COD).
The Intersection of 3D Printing and Trademark Law
2018
265
3
platforms liable for copyrighted material.89 In 2019
the nal wording of the Directive will be put to the
vote.
F. Conclusions
59
The aim of this paper was to answer the question
how, and to what extent, 3D printing can interfere
with the trademark law system. To answer it, as a
starting point, 3D printing was presented as a new
disruptive technology. According to research, this
technology with its freedom, easiness, and low
costs of designing and printing objects can have a
signicant impact on society, economy and also law.
Trademark law is one of the areas of law which might
be inuenced by 3D printing. First of all, there is a
matter of registering three-dimensional objects as
trademarks, which is generally not possible under
existing law regulations. Secondly, although one
may claim there is no signicant potential impact
of 3D printing on trademark law, the paper stated
that democratization and dissemination of the
manufacturing process, participation of hobbyists,
the signicant importance of CAD le, and the
possibility of its modication, and worldwide scope
of 3D printing based on the Internet may have an
impact on the trademark law system. 3D printing
was presented as a technology which empowers
regular users with greater tools that, if applied
dishonestly, can transform them into counterfeiters
and facilitate infringement of a brand. Even though
the problem of counterfeited reprinted goods may
still seem marginal (limited to a certain types of 3D
printed items commercially exploited), it might be a
growing trend along with the further development
of 3D printing.
60
Next, the paper analyzed possible solutions to
prepared companies and consumers for this trend,
which are based on Lessig’s idea of four modalities:
law, market, social norms and architecture. In the
area of trademark law, stricter hard law regulation
might not be an adequate response, thus we have to
look for solutions in selling 3D printed certicated
les by trademark owners, price regulation, and
better educational programs on counterfeit goods.
From the hard law perspective, establishing clear
rules of liability for intermediary online platforms
seems to be of key importance.
89 See the comments: Matt Reynolds, “What is Article 13? The
EU’s divisive new copyright plan explained”, (7 December
2018), online: Wired
what-is-article-13-article-11-european-directive-on-
copyright-explained-meme-ban>; Tom Bedford, Emma
Sims, “Article 13 approved: What are the EU copyright
law amendments?” (10 December 2018), online at: Alphr
what-is-it-copyright>.
61
Hopefully, the solutions described above will enable
the adjustment of the trademark law system to a new
3D printing reality. Then we can start thinking big,
get excited about the great potential of 3D printing,
and nally buy our rst 3D printer.

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