COMMERCIAL QUESTIONS
same or similar goods or services. Printed objects which reproduce logo or word marks as part of their shape, such as badges or charms to be clipped to handbags, will infringe in the same way without the appropriate licence. For distinctive product shapes, 3D trademark registrations (which do not necessarily cover the word or logo but can protect the product shape itself) are also possible. For example, the Coca-Cola and Johnnie Walker bottle shapes and L’Oréal’s Trésor and Miracle perfume bottle shapes are all protected by EU trademark registration. The registrations cover the shape of the products themselves, and not their packaging. However, these registrations may have limited enforcement value against objects sold with other packaging and design features that clearly distinguish the goods; features which detract from the shape and make confusion or association by the consumer less likely. 3D shape registrations can also be difficult to obtain: shapes which are wholly necessary to perform a function (eg, a basic chair shape) enough that they are capable of being seen by consumers as a badge of origin. Without this, registration can be obtained only by proving that a reputation has built up in the shape (ie, that the shape has become so recognisable that consumers can identify it as belonging to a single trade source). Demonstrating this is no small feat, particularly in the United Kingdom, where case law has traditionally set a high bar for proving the “acquired distinctiveness” of a shape mark. The European IP registry and are barred from registration altogether. In addition, to be protectable under trademark law shapes must be distinctive – unique
courts seem, for now, to accept a slightly lower standard of proof than the United Kingdom regarding acquired distinctiveness. However, to secure a pan-EU registration for a shape mark, this proof is needed for every member state. This can be hard for all but internationally iconic shapes that are widely marketed and distributed; but this is not to say that 3D registrations could not be secured at a national level where there is such proof. It is possible that the divergence between UK and EU law on this issue will widen post-Brexit, but for those shapes that are presently registered at EU level, it seems likely that the protection will, at least initially, continue to be recognised in the United Kingdom as part of any transition. Copyright To the extent that a product is covered by it, copyright can be an effective means of preventing unauthorised 3D printed copies. The key consideration is whether the original object can be classed as an ‘artistic work’ (this discounts many manufactured articles, but specifically protects ‘sculptures’ and ‘works of artistic craftsmanship’). A number of products which can be reproduced using 3D printers, including pottery and woollen jumpers, have been held to be works of artistic craftsmanship in the United Kingdom. Jewellery is likely to fall under that category. More functional consumer items often will not – for example, a prototype of a sofa was found not to be a work of artistic craftsmanship in the United Kingdom. Producing a 3D version of a 2D artistic work such as a drawing, painting or collage will also be an infringement (where the design of the original work itself is protectable under copyright).
Although an object itself may be not protectable under copyright, the image present on the face of the object might be. These have been found to be protected by copyright where the design has an independent character – for example, the surface of a badge (as in The Flashing Badge Company Ltd v Brian Groves (2007)). Copying a protected work and providing copies to the public are infringing acts. Anyone (including consumers making copies for private use) engaged in these acts will be infringing, regardless of whether they knew they were carrying out an infringing act or intended to do so, unless they have a defence or an appropriate licence. Suppliers of 3D printers are unlikely to be infringing copyright in the same way as suppliers of twin-deck tape recorders, clearly intended mainly to allow tape-to- tape recording, were exempted from infringement of music rights in CBS Songs Ltd v Amstrad Consumer Electronics Plc (1988). However, copyright is likely to protect the digital CAD files created from the 3D artistic work. It is clear that under the Copyright, Designs and Patents Act 1998 the fact that the work is in a different form is neither here nor there (otherwise musical scores could be copied and distributed en masse). It will be an infringement to use a 3D ‘artistic work’ to create an unauthorised 2D file, for example. Patents Patent registration may be an effective weapon against unauthorised commercial production of products by 3D printing. Keeping, using, offering for disposal or disposing of a patent- infringing product will be an infringing act, so simply producing a 3D-printed copy of a patented
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