New law allows 3D trademark models and e-certificates at Rospatent

On 20 July 2020, President Putin signed a law amending Part 4 of the Civil Code of the Russian Federation (Federal Law 217-FZ). The adopted normative act will come into force on 17 January 2021.

This latest development is part of the main policy directions of the Russia Patent and Trademark Office (Rospatent), which is to undertake actions aimed to improve the registration system and to speed up the process for all areas of intellectual property. In particular, Rospatent wishes to expand the use of electronic technologies in the registration of IP rights.

Once the amendments come into force applicants will be entitled to file 3D models as the part of their applications for trademarks, inventions, utility models and industrial designs. In addition, protection documents (except for patents for a secret invention) for registered subject matters will be granted electronically – although applicants may request a hard copy of a patent or trademark certificate in addition to this.

The amendments will contribute to improving wider legal norms by:

• simplifying the procedure of filing documents;
• speeding up the process of registering and granting protection documents;
• improving the quality of the examination being carried out (eg, the 3D models will help examiners to visualise the claimed dimensional object);
• reducing the volume of hard copies and thus meeting environmental protection goals; and
• helping to avoid small technical errors, which can occur while filing traditional hard-copy applications.

Rospatent has published additional information on the digital peculiarities of the electronic media being submitted on its website: “A STEP format (a set of commands that allow displaying unambiguously the 3D model) is assumed as the basic internal format of the files of the three-dimensional models due to the elaboration of its international standard (ISO 10303-21).”

In addition, specialists from Rospatent have noted that: “The three-dimensional models submitted by the applicant in the application materials will be used only when Rospatent carries out the examination of the claimed results of the intellectual activity. The publication of the three-dimensional models shall not be stipulated.”

From the point of view of trademark registration, there is no doubt that the new amendments are a win: 3D models will significantly improve the quality of the checks carried out on the dimensional designations in the issues of whether they are identical and confusingly similar. As to trademark certificates in electronic form – this is a justified measure in the context of increased use of electronic technologies and the development of commercial relations through the use of the Internet worldwide.