In Russia, legal protection for industrial designs is provided by Part 4 of the Civil Code (as amended). The Civil Code also provides the basis for registration procedures, as elaborated in the Administrative Regulations of the Federal Service for Intellectual Property (Rospatent).
Russia is not a signatory to the Hague Agreement Concerning the International Deposit of Industrial Designs. Thus, international designs cannot be extended to Russia, although it is possible to claim the priority date of an international design application when filing the corresponding national application in Russia.
In Russia, unregistered designs cannot enjoy legal protection as industrial designs as such. However, in some circumstances unfair competition and copyright law can provide protection for unregistered designs.
The Civil Code defines an ‘industrial design’ as a design for the appearance of an article of industrial or handicraft manufacturing, characterised by its essential aesthetic features, including shape, configuration, ornamentation, colour combination, outline and surface texture.
An industrial design can be registered if its essential features are new and original.
A design is considered to be ‘new’ if the sum of its essential features cannot be found in the prior art. The prior art includes all information which was publicly available before the priority date of the industrial design – for example, printed and online publications of any kind, demonstrations at trade fairs and Russian patent and trademark applications (which are published for third-party review).
However, an exception is made for information about the design disclosed by the author, the applicant for registration or any third party that has obtained such information from the author or applicant. Such disclosure does not affect novelty if the application for the same design is filed within a grace period of 12 months from the disclosure.
A design is considered to be ‘original’ if all essential features of the design are the result of the “creative nature of the characteristics of the article”. Thus, if the appearance of an article is exclusively the result of the article’s technical function, it cannot be protected as an industrial design.
Further, according to an example provided by the law, a design is original if the prior art discloses no designs for articles which both have a similar function as the proposed design and give the same general impression to the informed consumer. In practice, this means that an original design is one which is not confusingly similar to a prior design and for which the existing differences from prior designs do not result from the non-creative adoption of features of other prior designs.
However, the originality requirement introduces subjectivity into the industrial design protection system.
Types of design
Industrial design protection is available for the following types of article:
- a simple one-piece article (eg, a cookie);
- a single complex article (eg, a spacecraft);
- a set of articles (eg, a set of tableware);
- an article and its parts (eg, a bicycle and a saddle); and
- the ornamentation of an article.
An industrial design application may be filed (and the design patent can be owned) by foreign and domestic individuals and legal entities. Several applicants and several owners of one design are also allowed.
The official fees for registration of an industrial design are set in roubles and the fees are the same for Russian and foreign applicants.
Based on the exchange rate at the time of writing, official fees are affordable: the filing fee starts from $15, the examination fee starts from $30 and the registration fee is approximately $60.
Duration of protection
The initial term of validity of an industrial design patent is five years, calculated from the application filing date. This initial term may be extended multiple times in five-year increments, up to a total of 25 years.
The validity of the patent is also subject to payment of annuities, starting from the third year of validity.
The procedures for the Russian industrial design system are similar to those for the invention patent system. Thus, a design is protected if it has passed formal and substantive examination by Rospatent and the patent has been issued.
An application for industrial design patent should be filed with Rospatent. Foreign applicants must appoint a Russian patent attorney to carry out the filing and prosecution of the application.
The Rospatent industrial design department has not yet adopted an electronic filing system, so applications must still be filed in paper form.
A valid application should contain:
- the full names and addresses of the applicants. The right to file an application belongs to the authors of the design, their employer and any other party named in the relevant contract;
- the full names and addresses of the authors of the design. The authors of the design are the individuals who designed the article, regardless of whether they are employees of the applicant or contractors;
- the generic name of the designed article, indicating its purpose;
- a description of the design. This should explain in detail the purpose of the designed article, disclose the closest prior art (the analogue of the design) and describe the essential features of the design; and
- representations of the designed article (in photographs or drawings). This should provide a full view of all the essential features of the design. In most cases, the application should present seven views of the article:
- a main view (a three-quarter view);
- front and back views;
- left and right views; and
- top and bottom views.
One application may combine several variants of one design of a particular article (ie, a group of designs) if the variants share a common creative idea.
The applicant may ask for the priority of the proposed design to be based on the filing date for the same design in another country, provided that the country is a member of the Paris Convention for the Protection of Industrial Property and the Russian application is filed within six months. This deadline can be extended for two more months if external obstacles prevent the application from being filed in time.
A certified copy of the priority application should be filed within three months of the Russian application. If the certified copy is requested within eight months of the filing of the priority application, the deadline can be extended; in this case, the applicant must file the certified copy within two months of receiving the certified copy of the priority application.
The law allows divisional applications for industrial designs, which enjoy the priority of the initial application. It also allows applicants to claim the priority filing date of additional materials rejected by Rospatent in the prosecution of a separate application, subject to a three-month deadline.
Rospatent conducts formal and substantive examinations of industrial design applications.
During the formal examination the examiner checks the compliance of the submitted documents with formal and basic legal requirements. Rospatent may issue official actions during the formal examination, requiring the applicant to make corrections to the application.
The substantive examination is based on absolute and relative grounds for refusal. The examiner checks that the proposed design:
- is not merely functional;
- complies with the public interest and moral standards; and
- does not mislead the consumers about the function, manufacturer and place of manufacturing of an article (eg, does not feature third-party trademarks).
The examiner also conducts a patentability check (ie, a search for similar designs which could potentially deny the novelty or originality of the proposed design). If similar prior designs are found, the proposed design may be refused registration.
Substantive examination may involve issuance of official actions and correspondence with the applicant about the raised issues.
Registration and publication
If the application passes examination, Rospatent will issue a decision registering the industrial design and the applicant will be required to pay a registration fee. After registration, Rospatent will issue the industrial design patent and publish it in the Official Bulletin.
Under the existing law there is no option to defer publication of the design patent. Due to the long examination process (eight to 12 months), applicants do not usually need to delay publication.
The authors of the design may ask to exclude their names from the official publication.
Refusals can be appealed by filing a complaint with Rospatent within four months of the date of refusal. Such appeals are heard by the board of examiners in oral hearings and the decision on the appeal must be approved by the head of Rospatent. The timing of the appeal process differs from year to year and depends on the schedule of the examiners. One should expect a five to 10-month procedure.
Further appeals are possible by filing suit against Rospatent with the Intellectual Property Court.
Registered designs can be disputed by any interested party at any time after the registration of the design.
Cancellation actions based on lack of patentability should be filed with Rospatent. Such cancellation actions are treated similarly to appeals. Both the patent owner and the opponent are invited to participate in an oral hearing. Prosecution of cancellation actions usually takes longer than appeals: six to 12 months.
Cancellation actions based on disputed ownership or authorship should be filed as lawsuits with the Intellectual Property Court.
The exclusive rights to an industrial design can be enforced through legal action as soon as the design has been registered with Rospatent and the design patent has been issued.
The law defines the ‘infringement’ of a design patent as the import, manufacture, use, offer for sale, sale or introduction to the market (or storage with that purpose) of an article which:
- has the same function as the industrial design; and
- contains all essential features of the patented design or such essential features that make the same impression on an informed consumer as the patented design.
The ‘same impression’ provision is relatively new (having been introduced into the law in October 2014), and little case law exists interpreting the new definition. However, it would be logical to expect that judicial interpretation of this definition might be close to the familiar and well-tested doctrine of ‘confusing similarity’ used for trademarks.
The following remedies against infringement are available to the patent owner:
- recognition of exclusive rights (where the infringer denies their existence);
- prohibition of acts which constitute infringement (ie, the import, manufacture and sale of the infringing article);
- reimbursement of damages caused by the infringement, including real damages and lost profit;
- confiscation and destruction of the infringing articles and the tools used for their manufacture; and
- publication of the court decision in the Official Bulletin.
As of January 1 2015, design rights holders can claim statutory compensation for design infringement instead of the reimbursement of damages. Statutory compensation is either:
- Rb10,000 to Rb5 million (at the judge’s discretion); or
- twice the amount of royalties which would have been paid in similar circumstances by a lawful user of the rights.
Preliminary injunctions are available in industrial design infringement cases. However, in practice, judges rarely grant preliminary injunctions as they prefer to hear the case in full before ruling on an injunction application.
The rights holder may also initiate an administrative or criminal case against the alleged infringer by addressing the case to the police. The administrative and criminal penalties for infringement include fines, arrest or incarceration for up to five years.
Patent infringement cases are heard in the state arbitration courts (if the disputing parties are companies or entrepreneurs) or the state common courts (if the disputing parties are individuals) located at the place of residence of the alleged infringer.
A typical industrial design patent infringement case takes four to six months if it is considered by an arbitration court and no foreign party is involved. If a foreign party is involved, a longer timeframe of eight to 12 months can be expected.
Ownership changes and rights transfers
The rights to an industrial design may be assigned or licensed. The licence may be exclusive or non-exclusive. An exclusive licence prohibits the licensor from granting other licences, although the licensor may use the design unless the licence agreement provides otherwise.
The assignment and licensing of rights is subject to registration with Rospatent. Lack of registration invalidates the grant of rights.
The law prohibits free assignments and free perpetual and worldwide exclusive licences between commercial entities.
A change of ownership caused by a merger (or other reorganisation) and a change of name or address must also be registered with Rospatent. The law imposes all liability for non-registration of such changes on the rights holder.
In many cases, a design may enjoy simultaneous protection under the trademark and/or copyright laws. No legal provisions prohibit such double or even triple protection.
The common example of an article capable of multiple protection is a label or package (eg, a label for a bottle): the design of such article can be protected equally as a work of art (under copyright), as a means of individualisation (under a registered trademark) and as an industrial design.
Importantly, the law establishes no dependence between different forms of legal protection of the design. Therefore, termination of a design patent (eg, for non-renewal) does not affect the validity of the copyright or trademark rights for the same design.
However, including a registered trademark or a well-known copyrighted object as part of a proposed industrial design without the consent of the rights holder is prohibited.
This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.