Oversaturation of the market with homogeneous goods or similar services often becomes the cause of fierce competition between companies both for objects of patent rights (inventions, utility models, industrial designs, etc.) and copyrights.

Protection of the exclusive right to

industrial design

is granted on the basis of a patent issued if the essential features meet the criteria of novelty and originality (Article 1354 of the Civil Code of the Russian Federation), which include aesthetic features of the appearance of the product (shape of the product, patterns and ornaments in various colors, combined with lines, texture and/or texture of the material used for the product, etc.). That is, an industrial design is the original design of the product itself or what is placed on it.

An industrial design of an original design may be protected and

copyright

even in the absence of a patent for this object, and after passing the substantive examination at Rospatent and making a positive decision to issue a patent, the design is protected as an industrial design.

If a conflict of interest arises between the patent holder and an interested party, lawyers are guided by clause 27 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 No. 10 “On the application of part four of the Civil Code of the Russian Federation”, according to which the entire scope of legal protection of an industrial design is determined by the complex of its essential features, which are reflected in the image of its appearance, is contained in the patent and is regulated by the legislation in force on the date of filing the application for issuance of a patent.

In practice, one can often find violations of the exclusive right to industrial designs in cases where they have a similar visual effect on an informed consumer.

Evidence of infringement must be presented in documents that show the connection between the infringer (defendant) and the appearance of the product that is brought to market.

As an example, we can consider the case of a dispute between Vitalpharm CJSC and the holder of the industrial design patent No. 74164 “Case for a first aid kit” (FEST Enterprise LLC).

Against the issuance of this patent

nta in accordance with paragraph 2 of Art. 1398 of the Civil Code of the Russian Federation, an objection was filed, motivated by the inconsistency of the industrial design under the disputed patent with the conditions of the patent

"originality" abilities. The objection noted that the general visual impressions produced by the industrial design under the contested patent and each of the products known from publicly available information are the same.

The person who filed the objection presented additional materials and arguments in which it was noted that the label contained on the first aid kit case clearly uses an image of a BMW 3 Series 46er. After analyzing the Internet, a photograph was discovered that was identical to the image used on the label. According to the objector, this photograph was published on 01/26/2007 by Ahmed Salah

https://gallery.egyptsons.com/img12881.htm

), which allows us to conclude that Ahmed Salah may be the author of this photograph. As a result, the product under the contested patent contains someone else's copyrighted work, and the registration of an industrial design is contrary to the public interests.

The person who filed the objection received additional materials on April 15, 2022, which contained a printout from the Internet, according to which the image of the car belongs to BMW.

At the same time, the plaintiff presented additional materials, which, in his opinion, confirm that BMW cars are widespread in Russia, which was confirmed by an article posted on the Internet

. The popularity of BMW cars was also confirmed by their wide distribution in pop culture in the film “Boomer”, in the film “Boomer 2” and in the film “2 Fast 2 Furious”, in the film “Fast and Furious 4”, a press release from BMW Group Russia published. 01/29/2010.

Having studied the case materials and heard the person who filed the objection, the board established the following: taking into account the filing date of the application (02/16/2009), on which the disputed patent was issued, the legal basis for assessing the patentability of a group of industrial designs for the specified patent includes the Civil Code as amended on the date of filing the application, the Administrative Regulations for the performance by the Federal Service for Intellectual Property, Patents and Trademarks of the state function of organizing the acceptance of applications for an industrial design and their consideration, examination and issuance in the prescribed manner of patents of the Russian Federation for an industrial design (hereinafter referred to as the Regulations). In accordance with paragraphs. 4 p. 4 art. 1349 of the Civil Code of the Russian Federation, decisions that are contrary to public interests, principles of humanity and morality cannot be objects of patent rights. In accordance with paragraph 1 of Art. 1352 of the Civil Code of the Russian Federation, an artistic and design solution for an industrial or handicraft product that determines its appearance is protected as an industrial design. An industrial design is granted legal protection if its essential features are new and original. The essential features of an industrial design include features that determine the aesthetic and (or) ergonomic features of the appearance of the product, in particular the shape, configuration, ornament and color combination. According to paragraph 3 of Art. 1352, an industrial design is original if its essential features are due to the creative nature of the features of the product.

In accordance with clause 9.12.3 of the Regulations, the application must not contain expressions, drawings, drawings, photographs, images and other materials that are contrary to public interests (including public order).

In accordance with paragraphs. 1 clause 22.5.5 of the Regulations, when checking the originality of an industrial design, the essential features of the industrial design that meet the requirements of clause 1 of Art. 1352 of the Civil Code of the Russian Federation, reflected in the images of the product. According to paragraphs. 2 clause 22.5.5 of the Regulations, the essential features characterizing the industrial design being checked are not recognized as being due to the creative nature of the product’s features, in particular, in cases where the set of essential features of the industrial design being checked, reflected in the images of the product, is confusingly similar to the set of features of the appearance of a product of the same or similar purpose - the closest analogue that meets the requirements of clause 9.9.4.2 of these Regulations (the effect of simulating the appearance of a famous product). When assessing similarity to the point of confusion, information about known solutions that determine the appearance of products for a given and similar purpose is taken into account (about the analog series) and the limitations of designers’ abilities to develop solutions for the appearance of a product for a given purpose are taken into account, related, in particular, to the functional features of the product (taking into account the degree of freedom of the designer).

The industrial design under the contested patent was granted legal protection to the extent of the totality of features reflected in the images of the product and given in the list of essential features. In accordance with paragraphs. 1 clause 9.5 of the Regulations cited above, registration as an industrial design of solutions that can mislead the user of the product regarding the manufacturer and (or) place of production of the product and (or) goods for which the product serves, in particular, as a container, packaging, emblem, label. In this case, the label uses an image of a car that is associated with a 10 BMW car, widely known to Russian consumers and produced before the priority date of the disputed industrial design patent.

Thus, using an image of a car from a well-known manufacturer on the label of a first aid kit case may mislead the user regarding the manufacturer of this first aid kit, which in turn is contrary to the public interest in accordance with paragraph 4 of Art. 1349 Code. Based on the above, it can be stated that the objection contains arguments that make it possible to recognize the industrial design as contrary to public interests (see paragraph 4 of Article 1349 of the Civil Code of the Russian Federation).

As a result of the above conclusion, as well as in accordance with clause 22.5.1 of the Regulations, an analysis of the compliance of the industrial design under the contested patent with such criteria as the presence of someone else’s copyright on the product under the contested patent and the non-compliance of the industrial design under the contested patent with the patentability condition “originality” was not carried out.

Taking into account the above, the board came to the conclusion that there were grounds for Rospatent to make a decision to satisfy the objection received on January 28, 2022 - the patent of the Russian Federation for an industrial design No. 74164 should be invalidated completely.

In conclusion, I would like to note that due to the fact that an industrial design is the subject of patent law, a competent specialist with the appropriate education, qualifications and experience can give a correct assessment of its protectability, taking into account previously known products. In this regard, it seems appropriate to provide the assessment of intellectual property to a patent attorney.