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Articles

Packaging as a subject matter of intellectual property

May 07,2019

As a rule, we do not think about the fact that all that is around us is the implementation of human labor. And what has been created by a creative work is a result of intellectual activity.

In this article I would like to consider an issue of the correlation of the rights to such subject matters of intellectual property as an industrial design, a trademark, and a copyright subject matter using a product packaging example.

So, almost any product packaging contains a label, on which, in turn, the designation identifying the product, which distinguishes this product from the homogeneous product of third parties, is placed.

What ever element is the most important one – the packaging itself, the label or a distinctive word designation? What should be defended and how to do it?

First of all, it is necessary to proceed from the fact that the packaging with the label placed on it has been once invented by someone and implemented on a material carrier. Hence, there is an author, by whose creative labor this subject matter has been created. In this regard, we can talk about the copyright subject matter, which can be recognized primary.

After the creation of the copyright subject matter, the right holder can choose any way – either to protect this subject matter as an industrial design or to register it as a trademark. But first of all, the fact of the creation of the copyright subject matter and the exclusive right emergence must be registered. The further disposal of the rights depends on how correctly the documents will be prepared.

The most common way of registering the emergence and transfer of the exclusive right to the copyright subject matter is an agreement of the author's order or an agreement on the alienation. In accordance with these agreements, the exclusive right emerges / transfers from the author to another person, who may further register in his name a trademark in which the copyright subject matter will be reproduced, or obtain a patent for an industrial design.

The emergence and defence of the exclusive right.

Trademark

Industrial design

Copyright subject matter

 

The exclusive right certified by a certificate to a trademark shall be recognized to a trademark, that is, a designation that serves to individualize the products of legal entities or individual entrepreneurs (Article 1481).

Paragraph 1 of Article 1477 of the Civil Code of the Russian Federation.

 

The implementation of the appearance of the product of an industrial or handicraft manufacture shall be protected as an industrial design.

Paragraph 1 of Article 1352 of the Civil Code of the Russian Federation

The copyright subject matters shall be the works of science, literature and art, regardless of the merits and purpose of the work, as well as the way of its expression...

Paragraph 1 of Article 1259 of the Civil Code of the Russian Federation

Registering and obtaining a certificate (confirms the right)

Obtaining a patent (certifies the right)

Executing the right (confirms the right)

depositing

 

Nobody is entitled to use without the right holder’s permission the designations, which are similar to his/its trademark in respect of the products, for the individualization of which the trademark has been registered, or the homogeneous products, if such use results in a probability of the emergence of confusion.

Paragraph 3 of Article 1483 of the Civil Code of the Russian Federation

The industrial design shall be recognized used in the product, if this product contains all essential features of the industrial design or a set of the features that makes on the informed consumer the same general impression as the patented industrial design, provided that the products have the similar purpose.

Paragraph 3 of Article 1358 of the Civil Code of the Russian Federation

 

The use of the work, regardless of whether the relevant actions are performed for the purposes of gaining profit or without such a purpose, shall be recognized, in particular: ... reproducing

reprocessing

Paragraph 2 of Article 1270 of the Civil Code of the Russian Federation

Trademark

  • is a means of individualization.
  • the rights emerge as a result of the state registration, which is exercised after carrying out an examination, subject to its positive result.
  • the right holder is entitled to lodge claims in the case of revealing the use of an identical or confusingly similar designation. The obligatory condition is that the similar designation is used for the individualization of the homogeneous products.

Industrial design

  • is a result of intellectual activity, it protects the aesthetic peculiarities of the appearance of the product.
  • the rights are certified by the patent.
  • the right holder is entitled to lodge claims in the case of revealing the product of the same purpose, in which all features of the industrial design will be used or the set of the features will make the same general impression.

Copyright subject matter

  • is a result of intellectual activity, it does not require an additional registration, it is protected from the moment of its creation.
  • the right holder is entitled to lodge claims in the case of revealing the product that is a reproduction (copy) or reprocessing of the copyright subject matter.

The comparative analysis

 

Trademark

Industrial design

Copyright subject matter

 

The effect period of the right.

 

during 10 years with the further extension an unlimited number of times.

 

during 25 years

maintaining in the effect every 5 years

during the whole author’s life plus 70 years after his death.

The variants of the designation / appearance.

 

Word, figurative, ... combined

 

Two-dimensional,

three-dimensional

Figurative,

shape

An obligation of the registration / a payment of a state fee.

 

Yes

Yes

No

A novelty of the subject matter.

 

 

The check is exercised on the basis of the trademarks and industrial designs on the territory of the Russian Federation

 

A patent search for a worldwide novelty is exercised.

In the world (nobody checks)

The right holder is a legal subject.

 

 

A legal entity or an individual entrepreneur

 

Any person / multiple persons

Any person / multiple persons

An obligation of the use of the subject matter.

 

Yes

 

the legal protection may be terminated due to the non-use during three years after the registration.

 

No

No

An obligation of the registration of the disposal of the right

 

Yes

Yes

No

The defense of the right.

 

Trademark

Industrial design

Copyright subject matter

 

A prohibition of the use

Court

 

Yes

Yes

Yes

A recovery of compensation

Court

 

Yes

Yes

Yes

The unfair competition on the basis of Article 14.4 of the Law on Protection of Competition

The Intellectual Property Court, the antimonopoly authority

 

Yes

No

No

The unfair competition on the basis of Paragraph 1 of Article 14.5 of the Law on Protection of Competition

the antimonopoly authority

 

No

Yes

Yes

The unfair competition on the basis of Paragraph 1 of Article 14.6 of the Law on Protection of Competition

the antimonopoly authority

 

Yes

No

No

The unfair competition on the basis of Paragraph 2 of Article 14.6 of the Law on Protection of Competition

the antimonopoly authority

 

Yes

Yes

Yes

Each economic entity can determine for itself as what subject matter to protect and defend the packaging of its product. There is not a universal recommendation here.

Certainly, when the issue is about the word designation, then this is the trademark. If the issue is about figurative, shape and combined designations, then it can be any subject matter being considered in this article.

The main recommendation that I would like to give, it is to try to defend the own rights as much as possible. First of all, the goal to attack and lodge claims should not be set. The primary task is to defend oneself against the possible claims from third parties. As long as the person has his own protected subject matter of intellectual property, the courts, as a rule, dismiss the claim filed in respect of this person.

Автор материала

Aleksandra Pelikh
Head of Department / Senior Lawyer