From a legal perspective, the new technology of 3D-printing particularly affects industrial property rights. Printed products may infringe patents, designs or utility models as well as trademark rights. The question of the liability of print shops creating products with this technology from originals provided by third parties also has to be raised.
This article focuses on trademark law and analyses how trademark rights may be compromised by 3D-printing.
Introduction to 3D-printing
The term 3D-printing represents a general term for all manufacturing technologies which operate in accordance with different functional principles using very specific materials. When using Fused Deposition Modeling (FDM), thermoplastic materials are pressed through a hot nozzle within the print head. When using Selective Laser Melting (SLM) or Stereo Lithographic Machines (SLM), the print head consists of a laser which fuses the powdered raw material very precisely or precisely hardens synthetic resins. Common to all technologies is the additive production method applying and rigidifying the material in thin layers. The different materials are then processed and the original is reproduced in accordance with a digital original which was created using specific software or a 3D-scanner.
Pursuant to Sec. 14 German Trade Mark Act third parties shall be prohibited, without the consent of the proprietor of the trade mark in the course of trade, from using a sign which is identical or similar to the trademark for goods or services which are identical or similar to the ones covered by the trade mark. The decisive question then is whether there is an action in the course of trade.
Acting in the course of trade
Reproducing products together with trademarks for private use in your private hobby room does not fall within the scope of protection of trademark law.
In order to distinguish private and commercial actions, the case law primarily focuses on whether the use takes place in the context of a commercial activity with a view to economic advantages and not as a merely private matter. The scope of protection of trademark law is not affected in cases where the third party only pursues private, i.e. non-commercial goals in reproducing products or the trademarks appearing on them.
Internal operations where the printed products do not leave the operational sphere represent a borderline case. Caution is recommended here. The Supreme Court does not make high demands with regard to the existence of commercial actions in the interest of trademark protection. It may suffice that the products are accessible by an indefinite number of persons. A limitation to distribution is not appropriate and pursuant to Sec. 14 (3) Trade Mark Act the mere possession and application of trademarks on products are explicitly enumerated as infringing acts.
If the production of printed products constitutes an action in the course of trade, the next step is to examine if any of the cases of infringement of Sec. 14 (2) German Trade Mark Act are fulfilled. Impairment of one of the protected trademark functions must be examined. Specifically, one has to assess:
- "double identity" requiring the identity of the signs as well as of the products/services
- "dimension equality" which protects both the indication-of-origin function as well as further functions such as the communication and advertising function
- "likelihood of confusion" which also includes the usage of similar signs and hence is limited to the indication-of-origin function.
From this it is clear that printed products may in particular infringe upon word or word/figurative trademarks as well as three-dimensional marks.
Infringement of word marks or word/figurative marks will involve the reproduction of the trademark on the reprinted objects as well as the offering of infringing 3Dtemplates. One example of 3D-printing which satisfies the case of double identity is the reproduction of word or word/figurative marks on identical reprints. Hence, if identical reprints of products are manufactured and the word or word/figurative mark is also reprinted, then the application of the trademark and the placing on the market alone constitutes trademark infringement.
The Supreme Court's Opel-Blitz II judgement, states that the reproduction of a trademark on faithful reproductions is only admissible, when the relevant public (a) recognizes that it is a faithful reproduction and not a product of the trademark owner, (b) for this reason does not see the reprinted trademark as an indication of the origin of the model and when (c) the reproduction does not take unfair commercial advantage of the reputation of the trademark which it enjoys for the original product.
It is important to distinguish this scenario from the infringement of threedimensional marks. In this case, it is not the branded product but the trademark as a three-dimensional form itself which is reprinted. If a form protected as a threedimensional trademark is reproduced through 3D printing, it is likely that the elements which have an indication-of-origin character and therefore establish the protection are taken over as well. Therefore one can assume trademark infringements of 3D-marks in cases of faithful reproductions without further considerations.
Protected trademarks may already be infringed even before printing in cases where three dimensional templates - which have to be used for any print - are used. The offering of a 3D-template using a protected trademark can therefore constitute trademark infringement pursuant to the German Trademark Act. Even the digital illustration or the imitation of products protected under trademark law may already be sufficient in this context.
Apart from the possible infringement arising from the act of printing objects, providers of online file-sharing networks for 3D-print templates or providers of online printing services - in the case of Manufacturing on Demand services- are liable pursuant to trademark law. In principle, providers of internet marketplaces neither bear liability as offender nor as secondary participant or aider so long as they do not have knowledge of the imminent legal infringement. The provider's liability as an infringer can only result from a violation of reasonable duties of care. If the provider of an internet marketplace notices on the basis of an offer or on the basis of other unrelated circumstances that an offer or act in the course of trade infringes upon a third party's trademark rights, then he can be liable if he does not comply with his respective duties of care.
The situations we have outlined demonstrate that the technology of 3D-printing carries with it real risks of falling foul of provisions of German trademark law. Apart from these risks, entrepreneurs should however acknowledge the potential of this technology and should not be left behind by developments in this area. 3D printing can be used effectively and promote innovation in many business sectors as long as the relevant legal principles are respected.