The design of the product is considered as one of crucial elements of its attractiveness for consumers. Accordingly, obtaining due protection for the product’s design would aim to gain a competitive advantage on the market and an effective instrument for preventing copying and imitation of the product by competitors.

From the Russian perspective, a product’s design can be protected by the way of obtaining a Patent for industrial design. An exclusive right to an industrial design is recognized and protected in Russia only based on its State registration, which is followed by issuance of a respective Design Patent.

Actually, there are three main ways to obtain registration for an industrial design in Russia, namely:

National Russian Design Patent

An industrial design in Russia is interpreted as a solution of an outer appearance of an industrial or handicraft article. An industrial design is characterized by features, which determine aesthetics peculiarities of the article’s appearance, in particular the form, configuration, ornament (pattern), combination of colors, lines, contours, texture of the material the article is made of.

Designs of any kind of articles can be patented, including but not limited to packaging, labels, composite articles, sets of articles, typeface, logos, GUI, buildings, interiors design etc.

A single design application can be filed for a group of designs in case they comply with the unity requirement. Namely, legal protection can be granted to:

-  a group of designs that form a single creative concept and constitute a set (for a example, a tea set, a set of furniture etc.);

- variants of design that differ in non-essential features and / or features that determine the combination of colors.

In addition, the mentioned designs of the group must belong to the same class of the International Classification of Industrial Designs.

In case the information related to a design has been already disclosed by the author, the applicant or other person who received this information from them, the Russian design system provides for a grace period of 12 months for filing a design application without affecting the patentability due to disclosure of design.

The representations of the claimed design can be accepted in the form of photos, drawings, computer-generated pictures. The maximum number of representations acceptable for filing for one design is limited to seven. A 3D-model of an article can be also submitted as an option.

The Russian design system provides for a possibility to obtain protection for partial designs, namely, by filing a design application it is allowed to submit the representations of claimed design with the unclaimed elements shown with dotted lines.

Currently, the procedure for patenting an industrial design under the national procedure in Russia takes approximately 5-6 months. The procedure includes both formal and substantive examination conducted by the Russian Patent Office ex-officio, in particular, the Russian Examiner verifies the compliance of the claimed design with the patentability criteria of novelty and originality.

It is important to note that the Russian design system does not provide for deferment of publication of a design application (by default the publication occurs after payment of official grant fees and issuance of a Design Patent), however the deferment can be achieved implicitly by using some procedural possibilities.

The term of validity of a Design Patent is five (5) years counting from the application filing date and can be extended for a further period of five (5) years, the maximum term of validity is 25 years.

The scope of legal protection of a design in Russia is determined exclusively by the representations of the design reflected in the Design Patent.

International Design registration (Hague system) designating Russia

Russia is a Member of the Hague system for the International Registration of Industrial Designs, thus, a design protection can be obtained in Russia by the way of filing an international design application with the WIPO and with designating Russia as the country where the applicant wishes to gain protection.

The approach to consideration of international design applications by the Russian Patent Office is the same as applied to consideration of national design applications, however from the procedural perspective a national design application may be more advantageous for applicants.

Namely, in case with a national design application the issues connected with non-compliance of the claimed design with the patentability requirements can be resolved on the stage of substantive examination (by receiving an Official Action of substantive examination with an opportunity to submit a response with arguments) with a further possibility to appeal the negative decision with the Chamber of Patent Disputes of the Russian Patent Office (the body responsible for consideration of administrative disputes). While in case with an international design application such issues will be a ground for issuance of a Decision of refusal with a sole opportunity for the applicant to appeal the Decision with the Chamber of Patent Disputes.

The said difference is illustrated in an example below:

An international design (Decorative pattern for surfaces) was refused by the Russian Patent Office due to the claimed title of the design does not include an indication to an article for which the claimed deign is a part of and therefore it does not comply with the definition of the industrial design as set by the Russian law.

The solution for this case was rather simple, namely, the applicant requested to amend the title to “pattern for packages”, which was acceptable. However, in order to overcome the refusal the applicant had to file an appeal with the Chamber of Patent Disputes with a request to amend the title.

In case such kind of refusal were issued by the Russian Patent Office in frames of a national procedure the applicant could request an amendment of the title on the stage of substantive examination and get a favorable decision without the necessity to initiate an appeal.

By designating Russia in an international design application one should keep in mind some peculiarities taking into account the declarations that the Russian Federation made when joining the Hague system:

1) the Russian design system does not provide for deferment of publication of a design application, therefore, if the Russian Federation is designated in an international design application, it is not possible to request the deferment of publication of the international registration;

2) the Russian design system provides for the requirement of unity in relation to a group of designs claimed in one design application. In case of non-compliance with the unity requirement the Russian Patent Office will issue a provisional refusal in respect of an international design application with an opportunity to file divisional applications;

3) where a conventional priority claim was made in the international design application, the applicant must submit to the Russian Patent Office a certified copy of the first application in original within three months from the date of publication of the international design application. The representations in the international design application must strictly correspond to the representations in the certified copy of the first application;

4) change in ownership of an international design registration recorded in the International Register shall not have effect in the Russian Federation until the applicant submits documents confirming the change to the Russian Patent Office.

Other important conditions of the provision of legal protection under the Hague System in Russia can be found in the profile of the Russian Federation on the WIPO website in the Hague system section.

Eurasian Design Patent

Russia is a Member of the regional Eurasian design protection system, which is regulated by the Protocol on protection of industrial designs to the Eurasian Patent Convention (EAPC).  

The Eurasian Design Patent provides a unified protection in all countries where the Protocol entered into force, no additional validation by national Patent Offices is required. Actually, the Eurasian Design Patent expands its validity to the following jurisdictions: Russia, Armenia, Azerbaijan, Kyrgyzstan, Kazakhstan, Belarus, Tajikistan.

Starting from June 01, 2021 the applications for issuance of a Eurasian Design Patent can be filed with the Eurasian Patent Office (EAPTO) located in Moscow, Russia. It should be taken into consideration that applicants not domiciled in Member states of the Protocol should be represented by Eurasian Patent Attorneys duly registered with the EAPTO.

The registration procedure actually takes about 4-6 months (in case no opposition is filed).

The following essential features of the Eurasian design system should be taken into consideration by elaborating a design patenting strategy:

1) public disclosure of a design will not affect the patentability in case Eurasian design application is filed within 12 months from the date of disclosure;

2) Eurasian design application can include up to 100 designs in a single application provided they all belong to one and the same class of Locarno International classification;

3) partial designs are allowed (the elements of a design for which protection is not claimed should be shown with dotted lines or color marking/shading/blurring)；

Examples of acceptable representations:

4) the Eurasian Patent Office accepts the priority documents submitted using the WIPO Digital Access Service (DAS);

5) Eurasian design application undergoes both preliminary and substantive ex-officio examination. In case the results of preliminary examination are positive, the application is published for opposition purposes with no possibility to defer publication;

6) in case of refusal to grant an Eurasian Design Patent, the application can be transformed into national design applications in respective Member States of the Protocol;

7)  the term of validity of the Eurasian Design Patent is five (5) years (counting from the application filing date) and can be extended for a further period of five (5) years (the maximum term of validity is 25 years), the extension is made in respect of all Member States where the patent is valid;

8) Eurasian design is subject to a temporary legal protection within the period starting from the publication of the design application till publication of the granted Eurasian Design Patent;

9) assignment of the Eurasian Design Patent is possible only in respect of all Member States where the patent is valid;

10) the Eurasian Design Patent is enforceable according to national laws and procedural rules applicable to national design patents in the Member State where the infringement occurs.

Conclusion

Obtaining design rights should be considered as an important element of comprehensive strategy for protection of your intellectual property in Russia.

The lack of proper legal protection of an industrial design, as well as other intellectual property rights, can have the most negative consequences for foreign companies, since such a situation can provoke potential infringers to use the intellectual property of third parties without the possibility of effective counter-actions.