3D printing, which allows the creation of a physical object directly from a 2D blueprint, has taken a step closer to causing problems for trademark owners, with controversial file-sharing website the Pirate Bay declaring an interest in this developing technology. Yet will this activity necessitate a new approach to anti-counterfeiting or will it be a case of ‘business as usual’?

In a blog post, the Swedish site declared that the next stage in copying will be from digital into physical objects. “We believe that in the nearby future you will print your spare parts for your vehicles. You will download your sneakers within 20 years,” the statement said. The people behind the site are being slightly mischievous with this suggestion: complex objects made from multiple materials such as footwear are probably some way off being a reality. However the technology is developing quickly enough that brand owners should be aware of possible future dangers.

3D printing has already proven capable of making sophisticated items including musical instruments and medical devices, and is also proving to be a useful tool for jewellery designers, who can use the technology to create shapes that would not be possible with a mould. Many of these currently selling 3D-printed jewellery actually get the product made by companies such as Shapeways, rather than on their own printers - however the day when an average person can own his or her own device is not far off. At around US$1300 for a self assembly kit, such printers are not exactly a casual purchase, but the cost is far from prohibitive, and assuming that 3D printers follow the path of other technologies, it is likely that they will become considerably cheaper before too long.

However, from a brand owner’s perspective, fretting about counterfeiting issues for products such as trainers is “all a bit premature,” according to Ruth Orchard, director general of the Anti-Counterfeiting Group. “If you’re going to be able to actually make the object, you’re going to have to have the wherewithal, you’ve got to do it from the atom up. I don’t think most people will have the expertise or the equipment.” The chances that counterfeiters will be able to produce a high-quality branded product in the near future may be unlikely, however she acknowledges that “if there was something that took over from the physical transportation of objects and started resulting in any kind of impact on their genuine goods, obviously our members would be very keen to take steps”.

A probable next step in this technology may see individual consumers making single products in their own homes – but Orchard feels this is not something that should trouble trademark owners unduly: “If you are just doing it to see what happens, you are not going to be affecting the commercial wellbeing of the owner of the design or the owner of the object. I would query whether it would be worth anyone’s while to take action in those circumstances.”

Gary Assim, head of the IP and IT group at Shoosmiths, remarks that 3D printing may be “a fantastic move up in technology”, but from a legal point of view it need not necessitate any major change in approach. He uses the example of a pair of Nike trainers: “If the counterfeiters are going to recreate the product with the Nike trademark on, that’s going to be a trademark infringement. If they are going to recreate the product so that it looks exactly like the Nike trainer and sell it as if it’s the real thing, than that’s going to be a counterfeit. If it happens to be a distinctive trainer that maybe has its own design right because there is something about it that is distinctive in design terms, it will also be an infringement of the design rights. So to a certain extent I don’t think it will be anything different for trademark owners.”

But in Pirate Bay’s view of the future, the counterfeit-producing middle-men will be cut out of the equation, and individuals will be able to create branded products on their own printers from blueprints the website provides. Assim compares this hypothetical situation with parallel imports such as a consumer in the UK buying a pair of trainers from America that were never intended to be sold outside the US – something that is difficult to police. “What I imagine the brand owners would do is that if the Pirate Bay offering was starting to cause a serious commercial problem they would try to stop it. Brand owners would argue that Pirate Bay is intentionally causing individuals to infringe whichever IP rights there are in those products. Pirate Bay would say that they themselves were not doing it, but the brand owners would counter that they are colluding with individuals or allowing individuals to do it, and they are part and parcel of the infringement. Which I think would be quite a strong argument”.

The Pirate Bay website’s list of blueprints currently available does not include anything that is likely to trouble brand owners unduly – it is mostly small plastic models. However this website - which freely offers the latest Hollywood movies to its users to download – is one that trademark owners would be wise to keep their eye on in the future.


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