ECTA: 3D printing and trademarks

It’s apparent that rapid technological development is putting legislation and the interpretation of law under pressure. This particularly concerns IP law, since the rights awarded by it lie at the very core of technological innovation, the perceived engine for advancement and efficiency gains in a modern society.

3D printing (3DP) is just one of many developments, such as internet of things, blockchain and artificial intelligence, but from a trademark point of view, 3DP is quite interesting.

The question is whether the present scope of a trademark right sufficiently protects a proprietor if and when it becomes more common among consumers to print various goods at home? The matter highlighted here is whether the American autonomous concept of post-sale confusion could be of some relevance in this respect in Europe.

Pre-sale or initial interest confusion, which is a standard concept used particularly with regard to domain names, is not discussed due to lack of space.

3DP technology

3DP is also called additive manufacturing, which possibly better describes what kind of technology we are talking about.

The most common 3DP is the so-called fused deposition modelling, which creates objects by adding material in successive layers, building the object layer-by-layer over time. A thin strand of filament feeds in to the part of the printer called the extruder, which melts the material used, for instance plastic, at a very high temperature.

The instructions to the printer come from a digital file emanating from a computer. These digital files, called 3D models, can be created by using computer-aided design (CAD) and modelling software programs.

CAD files can be easily shared online and reproduction of a design can be initiated by clicking a button, since these files are disseminated on various internet platforms. Some of them are free—users can share and upload files without cost—but others, where the files are sold, are commercial. Possible trademark confusion and infringement come mainly into question in the latter case.

Trademark confusion

Within the EU the assessment of confusion, or more precisely the risk of confusion, in a trademark context is traditionally focused on actual confusion. This means that a risk of confusion might exist when a consumer is confused with respect to the origin of goods or services when concluding the purchase.

If this is the exclusive approach it means that if a consumer is confused before the act of purchase, but not any longer when making the purchase, or when she/he subsequently sees the product being used, there is not considered to be any trademark infringement.

A possible “deception” has legal relevance only with regard to the final purchase. Neither initial interest confusion, ie, pre-sale confusion, nor post-sale confusion, has any relevance.

There are probably several reasons for courts in Europe wanting to stick to actual confusion. One reason might be that neither the use of the concept pre-sale nor post-sale confusion has been regarded as important enough because possible problems can be solved by basing the assessment on actual confusion.

Case studies

Another reason might be that a consumer’s freedom of choice has been thought important enough to hinder the expansion of trademark protection. Some of the decisions made by the Court of Justice of the European Union (CJEU) reflect this. Two relevant decisions in this respect are the Arsenal (C-206/01) and Viking Gas cases (C-46/10).

The former concerned so-called double-identity, where the trademark and the goods are considered identical. Here the court found, on the basis of an abstract comparison, that actual confusion had taken place. The CJEU held that consumers who had not seen the notice on a stall outside the Arsenal football stadium, emphasising that the goods did not constitute official Arsenal FC products, could be confused.

This circumstance, however, was not given independent weight, but was considered only to confirm the actual confusion, that is the one which took place at the stall when the goods were purchased.