Nikolay Bogdanov February 13 2017 Protecting and enforcing design rights in Russia Gorodissky & Partners | Intellectual Property - Russia Nikolay Bogdanov Intellectual Property Legal frameworkUnregistered designsRegistered designsProceduresEnforcementOwnership changes and rights transfersRelated rightsLegal frameworkRussian design law is incorporated into Part IV of the Civil Code. Additional provisions regarding application proceedings are set out in the Rules on Design Patent Application Proceedings and the Instructions for Design Patent Application Documents.Generally recognised principles and norms of international law and treaties are also an integral part of the Russian legal system. International treaties apply directly and where such a treaty conflicts with Russian civil law, the international treaty will prevail. Russia is a signatory to the following international treaties relating to design matters:the Paris Convention for the Protection of Industrial Property;the Locarno Agreement Establishing an International Classification for Industrial Designs; andthe Agreement on Trade-Related Aspects of Intellectual Property Rights.In Russia, exclusive rights to industrial designs are recognised through registration in the State Register of Industrial Designs and certified by design patents issued by the Russian Patent and Trademark Office (Rospatent).Certain designs relating to applied art subject matter may be protected by copyright. The existence, exercise and enforcement of copyright require neither registration of the work nor observation of any other formalities.Unregistered designsIn some cases, if it can be proved that a design falls within the scope of copyright law, copyright protection may apply regardless of registered design protection. Copyright protection of an unregistered design starts from the creation of the work and lasts for the author's lifetime plus 70 years.In addition, an unregistered design for trade dress can enjoy protection against copying and imitation under unfair competition rules (according to the Federal Law on Protection of Competition).Registered designsThe author of the design or his or her legal successors or assignees (individuals or legal entities) can apply for and own a design patent.Where an industrial design is made by an employee in the course of his or her duties or pursuant to a special task entrusted to him or her by the employer, the employer will be entitled to apply for a design patent, unless otherwise stipulated in the contract (eg, employment contract) between the employee and employer.If a design is created under a contract, the customer will be entitled to apply for a design patent (unless the contract provides otherwise). The contractor in this case can use the industrial design for its own purposes on the terms and conditions of a free, non-exclusive licence.The outer appearance of an industrially made or handmade product can be registered as an industrial design. An industrial design may be three-dimensional, two-dimensional or a combination thereof.Patent protection as an industrial design will not be granted to:solutions whose features are determined exclusively by the technical function of the article;designs that may mislead consumers in respect of the producer or place of manufacture of the article, or in respect of the goods for which the article serves as a container, packaging or label;designs that reproduce or imitate official symbols, names or other distinctive signs; ordesigns that are contrary to the public interest or to principles of humanity and morality.To be eligible for patent protection, an industrial design must be new and original. A design is considered new if the sum of its essential features (as identified in the submitted images) is unknown from information generally available worldwide before the priority date (ie, the absolute novelty requirement). A 12-month grace period is provided for prior disclosure of the design by the author, applicant or a person who obtained information on the design from the author or applicant.An industrial design is considered original if its essential features are determined by the creative character produced by the distinct aesthetic aspects of the article concerned – that is, if no known design produces the same overall impression on the informed consumer as the claimed industrial design.When determining the novelty and originality of the claimed design, all publicly available patent, utility model and design applications previously filed with Rospatent are also taken into account (and thus may be a bar to novelty and originality).The application fee for a single industrial design is Rb2,500. For a group of designs (ie, the design of a product and any designs of independent parts of the product), the application fee is Rb2,500 plus Rb1,400 for each additional design. The fee for registration and issuance of a design patent is Rb3,250. The average costs associated with filing and prosecution of an application and grant of a patent are approximately $1,600, including official fees and patent agent fees.Annual maintenance fees are Rb850 for the third and fourth years of validity, Rb1,250 for the fifth and sixth years of validity and so on, up to Rb12,000 for the 21st to 25th years of validity.The fee to appeal a rejection or grant decision is Rb2,450. The fee to file an invalidation action is Rb3,250.ProceduresDesign applications are filed with Rospatent. Online filing is not available. Applicants that are not resident or established in Russia must appoint a patent attorney registered with Rospatent as their agent.An industrial design application should comprise:a request for the grant of an industrial design patent which indicates the name and address of the applicant and author;a set of representations of the design that fully conveys the essential features which arise from the design's particular aesthetic aspects;a perspective view drawing, ergonomic diagram and similar representations, where necessary to convey the essence of the industrial design; anda description of the industrial design.An application must relate to a single industrial design or a group of related designs which form a single creative idea (ie, the unity requirement). An unlimited number of designs can be included in a group.The application must be filed using a standard Russian-language form. It should indicate the name and address of the applicant and the name, citizenship and address of the author.Representations of the design (eg, photographs, drawings, computer scripts) must give a full and detailed impression of the external appearance of the product incorporating the design.The description should disclose:the Locarno class and title of the design;the intended use of the design;the closest prior art;a list of the submitted illustrations; andthe essence of the design.Design applications are subject to formal and substantive examination. Formal examination is conducted to determine whether:the application contains all of the required documents;the documents comply with the formal requirements; andall prescribed fees have been paid.Substantive examination verifies the design's compliance with the conditions of patentability (ie, novelty and originality) and commences immediately after a successful formal examination.Changes to a design application can be made only on the examiner's request. Submission of new images which add or remove essential features is not allowed.Following a successful substantive examination, the design will proceed to grant. The grant fee should be paid within four months of grant. After payment of the fee, Rospatent will enter the design in the State Register of Industrial Designs and grant the design patent. Immediately after registration, information relating to the design is published in the Official Bulletin of Rospatent (www1.fips.ru/wps/wcm/connect/content_en/en/ofic_publication/ofic_bul_en/po_en1). Publication includes a representation of the design. Designs registered with Rospatent can also be accessed through the EU Intellectual Property Office's DesignView search tool. The entire application file is publicly accessible after publication of the design patent. Deferred publication is unavailable.If the applicant disagrees with the examiner's decision, it may lodge a reasoned appeal with Rospatent within seven months. A further appeal against Rospatent's decision may be filed with the IP Rights Court.Design applications cannot be opposed by third parties. However, a design patent may be invalidated, in whole or in part, at any time during its period of validity on the following grounds:The patented design does not comply with the conditions of patentability specified by law.The patent adds or removes essential features of the design (as stipulated in the filed application).The patent was granted in breach of the established procedure, where several applications with the same priority date were filed for an identical design.The patent was granted with an incorrect indication of the author or owner.Invalidation actions on the first three grounds are filed with Rospatent, while invalidation actions on the last ground are filed with the court. Rospatent's decision on an invalidation action may be appealed to the IP Rights Court.In addition, a design patent's validity can be challenged on the above grounds even after its expiry or early termination, but only by an interested person (eg, a person accused of patent infringement).EnforcementThe owner of a design patent has the exclusive right to use the protected design. The scope of protection extends to any product that produces the same overall impression on the informed consumer as the patented design.The manufacture, use, import, sale, offer for sale or any other form of commercialisation or storage for such purposes of a product incorporating a registered design without the rights holder's consent constitutes infringement. The product is deemed to incorporate a patented design if it has all the essential features of the patented design or an equivalent combination of features which produces the same overall impression on the informed consumer as the patented design, provided that the design and the relevant product have a similar purpose.Civil actions for design infringement are filed at the first-instance commercial court of the location of the infringer. As a cassation court, the IP Rights Court hears design infringement cases on appeal from the first-instance commercial courts and commercial appeal courts.Available remedies for design patent infringement include:injunctions;damages, as well as reasonable attorneys' fees;confiscation and destruction of infringing goods; andpublication of the court decision.In lieu of damages, the rights holder can demand the following compensation:Rb10,000 to Rb5 million, set at the court's discretion in light of the nature of the infringement; ordouble the licence price usually charged under comparable circumstances for lawful use of the patented design.The same remedies are available for design copyright infringement. However, the compensation that the rights holder can demand in lieu of damages may also be calculated as double the price of the counterfeit copies sold of the work incorporating the design.Judicial proceedings for infringement of registered or unregistered designs typically last around three to four months. Complicating circumstances (eg, the need to obtain expert opinions or failure of a party to attend the hearing) may delay proceedings for a further one or two months. If the case is appealed and goes through all court instances, the proceedings may last two years or more.Administrative liability for the illegal use of registered designs is set out in the Code of Administrative Offences, which establishes fines of Rb1,500 to Rb40,000. The code also establishes fines of Rb12,000 to Rb20,000 for individuals and Rb150,000 to Rb500,000 for legal entities for unfair competition in the form of copying or imitating an unregistered design.Ownership changes and rights transfersThe rights holder may dispose of its exclusive right to an industrial design by assignment or licence.Assignment of a design patent is not allowed if the assignment may mislead consumers in relation to the product or its manufacturer.Voluntary exclusive and non-exclusive licences under a design patent may be granted. The licensor of an exclusive licence cannot use the licensed subject matter within the scope granted to the exclusive licensee unless otherwise provided in the licensing agreement.Design patents can be pledged. Under the pledge agreement, the pledger can use the industrial design and license it without the pledgee's approval, unless the agreement provides otherwise. However, the pledger may not assign the patent without the pledgee's consent, unless the agreement provides otherwise.The assignment, licensing and pledging of design patents are subject to official registration with Rospatent, failing which the relevant rights transfer will be deemed void. Any party to the relevant contract may register the rights transfer.The rights holder may submit to Rospatent a statement granting any person the right to use the design (ie, an open licence). Following Rospatent's publication of the open licence notice, maintenance fees for the design are reduced by half, starting from the following year. The rights holder must communicate the terms and conditions of the open licence to Rospatent and such terms and conditions will be published at the rights holder's expense. The rights holder must conclude a non-exclusive licensing agreement with any party wishing to use the registered design.Related rightsIf the design can be deemed a work of art, copyright protection applies regardless of registered design protection.Where copyrighted subject matter is registered as an industrial design with the rights holder's consent, protection of the exclusive rights against infringement will depend on the nature of the infringement. If the infringer uses an industrial design, the rights holder may apply for measures used to enforce patent rights. If the exclusive right to use a work of art is infringed and such infringement is unrelated to the use of the industrial design, the rights holder may apply for copyright protection measures.For further information on this topic please contact Alexander Vasilets or Nikolay Bogdanov at Gorodissky & Partners by telephone (+7 495 937 6116) or email ([email protected] or [email protected]). The Gorodissky & Partners website can be accessed at www.gorodissky.com.