‘Essential Function’ Doctrine to Combat Infringement via 3D Printing: Any good?

On Friday 17 April at 4pm in Room B 57 (Old College) Dr Jamil Ammar, Research Fellow at the University of Edinburgh, presented on the following topic:

‘Essential Function’ Doctrine to Combat Infringement via 3D Printing: Any good?

Abstract: The capability of the ‘average’ consumer to 3D print a range of branded goods  from the comfort of his/her own home does not mesh well with the current regulatory system of trade mark law where the use of the trade mark in relation to goods or services must be under the control of a single undertaking which must be responsible for their quality. While many commentators have questioned the implications of 3D technology on patent and copyright laws, rather few scholars have attempted to address the impact of that technology from a trade mark functions perspective.

This paper suggests that there are significant limitations to the protection that trade mark law can offer rights owners in the developing field of 3D printing. The requirement that the sign be used ‘in the course of trade’ for an infringement to arise is of particular importance in that 3D printing may be on a substantial scale and at the same time primarily for private purposes. For this reason trade mark holders may well wish to pursue the providers of CAD files. But CAD files do not directly replicate the physical products protected by the mark, and protection may, at most, be available in relation to marks with a reputation. Despite these significant concerns, this paper concludes that the Court of Justice’s flexible reading of the trade mark functions seems to place the law in a position to sufficiently tackle 3D infringement challenges.

Thanks to everyone who attended the event, great talk and discussions!