‘Crossing of defence’ as an effective way to protect rights to IP subject matter

There are several ways to obtain protection for a product’s appearance, shape or packaging – the main method being to register it as a trademark or an industrial design. However, in some cases, it is possible to obtain protection as both, which is known as ‘crossing of defence’.

Article 1482 of the Russian Civil Code states that words – figurative or combined – as well as 3D or other designations can be protected as trademarks. Registering the appearance of a product (eg, an original bottle or a product design) is also permitted.

Industrial designs, as per Article 1352(1), are the results of the appearance of the product. Therefore, subject to compliance with patentability criteria, obtaining protection for a product’s packaging or appearance as an industrial design is permissible.

The main advantages of trademark registration are as follows:

  • The period of legal protection can be extended for an unlimited number of times. The trademark certificate is in force for 10 years from the date of filing the registration application and further extensions every 10 years are possible.
  • Many subject matters are registrable, including combined designations (eg, 3D, holographic, video and sound elements, among others).
  • There are simple requirements when assessing the novelty of the subject matter. During trademark examination, examiners take into account information about the subject matter within the country only, whereas worldwide novelty is required for industrial designs.

However, there are also several advantages to registering subject matter as an industrial design:

  • An individual can become a patent holder, while only a legal entity or an individual entrepreneur can be the owner of a trademark certificate.
  • Use of the registered industrial design is not obligatory. After obtaining the patent, the rights holder may, at their own discretion, dispose of the subject matter (which includes non-use) during the period of protection. As for trademarks, the early termination of the certificate due to non-use of the designation may be possible if a third party files a statement.

Subject to compliance with registration requirements, rights holders may choose the form of protection for the result of the intellectual activity. It is worth taking into account the cost of the procedure, maintaining the protection document in force and the expediency of the particular kind of protection, depending on the intended type of use. The main differences are the time periods and the procedure for the certificate or patent being in force and the requirements for the subject matter of the registration. The legal protection is almost identical.

Crossing of defence

It is not always necessary to choose between registering as a trademark or industrial design. In many cases, it is possible for a rights holder to register the same subject matter in several fields.

The term ‘crossing of defence’ is used where registration is possible in several fields. It means that subject to appropriate registration, a comprehensive (‘crossing’) legal protection is in force, which enhances protection in accordance with standard practice for industrial property and trademarks. To benefit from crossing of defence, the rights holder must register the IP subject matter and subsequently obtain the protection documents issued by the authorised state body.

The image shows that protection across multiple IP fields is possible with regard to a specific group of subject matters only. At the same time, a rights holder may register the result of the intellectual activity in the same field, but then the crossing of defence will not apply and there is therefore a possibility of a collision with the rights of another legal subject.

This is an insight article whose content has not been commissioned or written by the WTR editorial team, but which has been proofed and edited to run in accordance with the WTR style guide.

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