Russia

Legal framework

In Russia, the industrial design patenting process and industrial design protection are regulated by the following international and national legislation:

• the Paris Convention for the Protection of Industrial Property;
• the Locarno Agreement Establishing an International Classification for Industrial Designs; and
• Part IV of the Civil Code.

On October 1 2014 major changes to Part IV of the Civil Code came into force. These amendments aim to improve the registration process for industrial designs, reflect changes made to the legal framework in recent years and bring the Russian industrial design regime into line with the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

Industrial design patent system

An ‘industrial design’ is a solution defining the outer appearance of an industrial or handicraft article. An industrial design patent is granted if the industrial design is new and original. An industrial design is new if the combination of essential features shown in the representations of the article’s outward appearance is not known from information that was generally available before the priority date of the industrial design. An industrial design is original if its essential features are determined by the creative nature of specificities of the article – in particular, if no similar design that produces the same general impression on the informed user is known.

‘Essential features’ are features determining aesthetic specificities of the article’s outer appearance, including shape, configuration, ornamentation and combination of colours, lines, contours, texture and facture of the material of the article. The scope of protection of an industrial design is defined by a combination of essential features, which are shown in the representations of the industrial design.

Unregistered designs

There is no protection for unregistered designs, although in some cases copyright protection of a design is possible (see “Related rights” below).

Registered designs

The right to obtain a patent for an industrial design belongs initially to the creator of the industrial design, although such right may be assigned to another person. Foreign applicants can file an industrial design application in Russia only through a local patent attorney.

The following can be protected as industrial designs:

• two-dimensional (2D) articles (eg, labels);
• three-dimensional (3D) articles (eg, packaging);
• compound articles;
• independent parts of whole articles;
• sets of articles; and
• interiors.

The following cannot be protected as industrial designs:

• designs which are defined exclusively by the technical function of the article;
• designs which mislead the consumer regarding the manufacturer of the article, the place of manufacture of the article or merchandise for which the article serves as a container, packaging or label;
• designs which are considered to be contrary to public interests, principles of humanity or morality; and
• designs that reproduce or imitate official symbols or signs (eg, flags, emblems, insignias, banknotes), the names of international and intergovernmental organisations or their flags, emblems and other symbols and signs, official controls, guarantee marks or hallmarks, seals, awards and other insignias.

The cost of patenting an industrial design (filing and prosecution) includes official fees and attorney fees. On average, to patent a single industrial design may cost approximately $2,000.

Procedures

Filing requirements

In order to file an industrial design application, it is necessary to submit:

• a request for issuance of an industrial design patent, including the title of the industrial design, the name and address of the applicant, the name, address and citizenship of the designer and information about convention priority;
• representations of the industrial design (eg, photographs, line drawings, computer-generated pictures) – these must provide a detailed view of the outer appearance of the article;
• a description;
• if applicable, a certified copy of the application based on which convention priority is claimed (this can be filed within three months of the filing date); and
• if applicable, a power of attorney (the term for filing a power of attorney is not prescribed).

To obtain a filing date, it is necessary to submit a request for issuance of an industrial design patent, together with its representations and description, to the Patent Office. Electronic filing of industrial design applications is not possible.

Grace period

The disclosure of information relating to an industrial design by its author, the applicant or any person that received such information from them (in particular, as a result of disclosure of an industrial design at an exhibition) will not prevent registration of an industrial design, provided that the industrial design application is filed within 12 months of disclosure of the information.

Multiple applications

An industrial design application may contain one design and its variants, or one design and independent parts thereof if they relate to a single Locarno sub-class. The number of designs in one industrial design application is unlimited. Each industrial design has an independent scope of protection. Multiple industrial design applications are less costly than filing separate industrial design applications for each design.

Examination

An industrial design application undergoes formal and substantive examination. During the formal examination, the following are checked:

• the completeness and correctness of the application materials;
• the eligibility of the claimed industrial design as such;
• the correctness of classification as an industrial design;
• the unity requirement; and
• the fee.

In case of non-compliance with one of these conditions, the Patent Office will issue an official action. The term for response to the official action is three months from the date of issuance. This term can be extended.

The substantive examination starts automatically after a positive formal examination and includes:

• the establishment of convention priority;
• verification of whether additional filed materials modify the essence of the industrial design; and
• verification of compliance with patentability criteria.

In case of non-compliance with one of these conditions, the Patent Office will issue an official action. The term for response to the official action is three months from the date of issuance. This term can be extended.

If the industrial design complies with all of the conditions, a decision to grant is issued. After payment of the grant fee, registration and publication take place.

Publication and deferral of publication

An industrial design patent is published once a decision to grant has been issued and the grant fee has been paid. There is no official procedure for deferral of publication.

Term of protection

The duration of industrial design patent protection is five years, with the possibility of four five-year extensions (effective as of January 1 2015).

Appeal

If the Patent Office rejects an industrial design patent application, the applicant may appeal the decision and the Patent Office will appoint a panel of experts to examine the appeal. An appeal must be filed with the Patent Office within seven months of the date of issuance of the rejection.

Invalidation

A patent for an industrial design may be invalidated in part or in full during the period of its validity in the following cases:

• The industrial design does not satisfy the novelty and originality criteria or satisfies one of the non-registration criteria set out above (eg, it reproduces or imitates official symbols or signs);
• Essential features appear in the representations of the article included in the decision to grant which were absent from those submitted at the filing date or have been deleted from those submitted at the filing date;
• The design patent was issued based on several applications for identical industrial designs with the same priority date; or
• The design patent was issued indicating an incorrect person as the designer or patent holder.

Enforcement

Article 1229 of the Civil Code provides that a rights holder may permit or prohibit other persons from using the result of its intellectual activity. The absence of such prohibition shall not be considered to be consent or permission. Other persons may not use the result of intellectual activity without the consent of the rights holder. The use of the result of intellectual activity without the consent of the rights holder constitutes infringement.

Several possible remedies are available against infringement of an industrial design.

Administrative proceedings

In accordance with the Code on Administrative Offences, unlawful use of a patented industrial design incurs an administrative fine of $40 to $60 for individuals, $285 to $315 for officials and $835 to $1,140 for legal entities.

In the course of administrative proceedings, it may be possible to organise police raids in order to document the infringement. The police draw up an administrative offence report and transfer the administrative case to the court, which makes a final decision on the matter. This procedure may take four months.

Civil proceedings

Civil proceedings begin with the patent owner filing a claim with the court. IP disputes are under the jurisdiction of both common and commercial courts. The common courts consider cases where at least one of the parties is an individual (taking approximately one year), whereas disputes between companies and private entrepreneurs are dealt with by the commercial courts (taking approximately four to six months). Within the framework of these proceedings, the rights holder may apply to the court seeking the cessation of the infringement, damages or monetary compensation as an alternative to damages and publication of the court’s decision.

Damages comprise the expenses that the rights holder has suffered or will incur to restore the violated right, loss or damage to its property and lost income (ie, income which the rights holder would have received if its right had not been violated). If the infringer received income as a result of such action, the rights holder can demand compensation for lost profits of an amount not less than such income. Alternatively, the plaintiff can claim compensation without proving damages and the court can rule on this.

Criminal proceedings

In accordance with the Criminal Code, illegal use of an industrial design, disclosure without consent of the essence of the industrial design before official publication and misappropriation of authorship or inducement to co-authorship will entail criminal responsibility for the infringer only if the act has caused significant damage.

The punishment for such crime is:

• a fine of up to $5,700 or the salary or other income of the convicted for up to 18 months;
• forced labour for 480 hours or correctional labour for up to two years; and
• imprisonment for up to two years.

The same crime, if committed by an organised group, shall be punished by:

• a fine of between $2,800 and $11,200 or the salary or other income of the convicted for between one and two years;
• arrest for four to six months; and
• imprisonment for up to five years.

Criminal proceedings consist of two stages: a preliminary investigation and a court hearing. They start with an application filed with the police by any concerned person and end with the first-instance court pronouncing a sentence. This sentence may appealed. The duration of criminal proceedings is hard to predict, but is approximately one to two years.

Special administrative procedure

A design infringement may constitute unfair competition. The Anti-monopoly Service is empowered to hear disputes relating to unfair competition through a special administrative procedure. This procedure starts with a complaint filed by the patent holder and finishes with the decision of the Anti-monopoly Service. The latter may be appealed to the commercial court. The procedure lasts around six months.

Ownership changes and rights transfers

The Civil Code provides that assignments of registered designs and licence agreements must be registered with the Patent Office in order to be valid.

In order for the Patent Office to accept an assignment, it must specifically identify the design registration or application being assigned and the amount of consideration, and both parties must sign the assignment. The licence agreement must be signed by both parties, clearly identify the right that is being licensed, specify the amount of consideration and be registered with the Patent Office.

Licences can be non-exclusive or exclusive. A licence is deemed to be non-exclusive unless it specifically mentions that it is exclusive.

It is legally possible for a licensee to sub-license rights related to an industrial design, provided that the licensor has consented to the sub-licence. Such consent may be provided in the master licence between the licensor and the licensee. As with any licence, it must be duly registered with the Patent Office in order to be valid. The licensee can obtain only a sub-licence that is as broad as the terms set out in the master licence and for a term not exceeding the master licence.

The Civil Code also allows the owner of an industrial design to offer an open licence, in which case the maintenance fees are reduced by 50%. In order to do so, the owner must submit to the Patent Office a statement offering the licence on a non-exclusive basis.

Related rights

Unregistered designs are not enforceable, but in some cases copyright for an industrial design may be claimed and enforced. Objects which can be protected under both copyright and industrial design law are jewellery, clothes, watches and architectural objects.

Further, objects which can be protected as both trademarks and industrial designs are:

• 3D articles such as bottles, flacons, containers, boxes, tubs, canisters and flasks; and
• 2D articles such as tags, labels, wrappings and credit cards.

Gorodissky & Partners

B Spasskaya str, 25, bldg 3

129090 Moscow

Russia

Tel +7 495 937 6116

Fax +7 495 937 6123

Web www.gorodissky.com

Vladimir Biriulin

Partner

[email protected]

 

Vladimir Biriulin is a partner in IP law firm Gorodissky & Partners. He graduated from Moscow State Linguistic University, Moscow University of Law and the Central Institute of Intellectual Property (Moscow). Mr Biriulin counsels clients on Russian and foreign IP legislation, international IP treaties and agreements, technology transfer and licensing, IP rights infringement, unfair competition and copyright, and litigates IP cases.

Mr Biriulin delivers lectures in Russia and abroad at conferences and seminars, and regularly publishes articles in IP magazines. The International Who’s Who of Patent Lawyers ranked Mr Biriulin as a leading IP professional in Russia, and the IAM Patent 1000 2014 and the WTR 1000 2014 listed him as a recommended individual.