Optional pre-grant publication of design patent applications to be introduced in Russia

• Foreign companies and designers can seek design protection through the Hague System for the International Registration of Industrial Designs in Russia
• The State Duma passed a bill allowing the publication of information on industrial design applications at the applicant’s request
• The bill is aimed at supporting the consumer goods industry by harmonising industrial design protection mechanisms

It has been almost a year since the option of using the international Hague registration was added to the Russian national system of industrial design registration. Following Russia’s ratification of the Geneva Act of the Hague Agreement, foreign companies and designers can now seek design protection through the Hague System for the International Registration of Industrial Designs in Russia.

On 17 October 2018 the State Duma voted overwhelmingly to pass a bill in the first reading which would allow the publication of information on industrial design applications at the applicant’s request (amendments proposed to Clause 4 of Article 1385 of the Civil Code). It would also provide temporary protection for industrial designs (amendments proposed to Clause 1 of Article 1392 of the Civil Code) by analogy with the temporary protection for inventions provided by the current law.

The bill is aimed at supporting the consumer goods industry by harmonising industrial design protection mechanisms. According to the proposed changes, industrial design applications filed for registration with the Russia Patent and Trademark Office will enjoy temporary protection, starting from the date of publication of the design application until its grant. Temporary protection will be granted according to the combination of the design’s essential features shown on the graphic representation of its appearance.

The revised provisions will allow applicants who choose to publish information on their applications to seek monetary compensation for unauthorised copying or imitation of designs that takes place during the period between the application’s publication and the issue of the design patent.

The proposed changes are in line with the approach given in the Order of the Ministry for Industry and Trade on establishment of development strategy of the consumer industry in Russia.

These changes have been welcomed by the fashion and consumer goods industries. The importance of due regulation in the sphere of textile design protection is also emphasised in the Agreement on Trade-Related Aspects of IP Rights, which became binding for Russia in August 2012. Signatories to the agreement must ensure that the requirements for securing protection for textile designs, including the costs as well as examination or publication procedures, do not unreasonably impair opportunities to seek and obtain protection.

Although obtaining a registration is a reasonably swift process, this route is still ineffective for seasonal goods with a limited lifecycle (eg, apparel, shoes and accessories), which require immediate protection.
While designs can also be protected by copyright in Russia, enforcement can be tricky. In cases where partial imitation of the design or copying of the general concept with some changes take place, it can be problematic to prove infringement based on copyright.

The proposed amendments are also intended to stimulate the number of design applications filed for protection and to contribute to the overall development of the consumer goods industry.

The draft bill is in line with the provisions of the Treaty on the Eurasian Economic Union, as well as other international treaties to which Russia is a party.

The second reading of the bill before the State Duma is now underway.