The peculiarities of proving a violation of the exclusive right to an industrial design
In the recent years, the disputes on such subject matter of intellectual property as an industrial design are quite common. The amendments introduced into the Civil Code of the Russian Federation have served a reason for this. These amendments have commuted the criteria for a violation of the exclusive right to an industrial design. But this will be laid out in more detail further.
First of all, it is necessary to understand what the industrial design is. In accordance with Paragraph 1 of Article 1352 of the Civil Code of the Russian Federation “The solution of the appearance of the product of an industrial or handicraft manufacture shall be protected as an industrial design.”
The protection of the intellectual rights to the industrial design is granted on the basis of a patent in the scope determined by a combination of the essential features of the industrial design reflected on the images of the product appearance contained in the patent for an industrial design (Paragraph 3 of Article 1354 of the Civil Code of the Russian Federation).
The combination of the features includes the essential features that determine the aesthetic features of the appearance of the product, in particular a shape, a configuration, an ornament, a combination of colours, the lines, the contours of the product, a texture or facture of the material of the product.
Having analyzed the data of the legislative provisions, we can say that the industrial design is a design of the product itself or a design of something that is placed on the product, a label, for example.
However, with this approach, a collision with the subject matters of the copyright may appear, which include “the works of science, literature and art regardless of the merits and purpose of the work, as well as of the way of its expression ... the works of painting, sculpture, graphic, design, graphic stories, comics and other works of fine art” (Paragraph 1 of Article 1259 of the Civil Code of the Russian Federation).
There is an opinion that the design, being a subject matter of the copyright, may be patented as an industrial design, because essentially, the industrial design also has an author and, by its legal nature, it is at first a subject matter of the copyright, and then after undergoing an examination in the Federal Service for Intellectual Property (Rospatent) and making a decision on granting a patent, the design becomes an industrial design. Previously, there has even been a position not to allow applying for a defence of the design as a subject matter of the copyright. Before lodging claims, one should have obtained the protection of the design as an industrial design. Currently, the judicial practice is well established, the court has settled the issues on the subject matters of intellectual property.
Confirming the findings of the Court of Appeal, the Intellectual Property Court in its decision of 13.11.2014 in case No. A66–6209/2013 indicated the following “The Court of Appeal, while reconsidering the case, was guided by the norms of the civil legislation regulating the copyright and not by the patent rights. The court came to a conclusion that in the case, if the decor of the dishes was not registered as an industrial design, it did not mean, as was considered mistakenly by the first-instance court, LLC ALTrade and Sokolov A.N. that the copyrights to the design of the pattern, which was applied on the dishes, were not subject to the legal protection.”
Some stability in the judicial practice and the simplification of the defence criteria have served as a basis for increasing a number of the patents being granted for industrial designs and, accordingly, a number of the disputes on them.
In the dispute on the subject matters of intellectual property, the plaintiff must prove that he has an exclusive right, as well as the fact of the violation of this right by the defendant. The defendant shall be obliged to prove that he has fulfilled the requirements of the intellectual property legislation. Otherwise, the individual or the legal entity shall be recognized as a violator of the copyright and (or) the patent rights, and the civil liability comes in respect of him/it in accordance with the legislation of the Russian Federation.
In respect of the subject matters of the copyright, it is rather complicated to prove that the plaintiff has the exclusive right – at whom it has appeared, under what circumstances, in what way it has been transferred to the plaintiff. One should submit to the court the relevant documents, which all this will follow from.
Unlike the subject matter of the copyright, it is rather easy to prove the existence of the exclusive right to the industrial design. When applying to the court, it is sufficient to attach to the statement of claim the patent for an industrial design, in which the plaintiff will be indicated as a patent holder.
The whole difficulty is to determine a scope of the legal protection and to justify the compliance with the requirements of the legislation, which has stipulated the criteria for the violation of the exclusive right.
According to the explanations contained in Paragraph 26 of the Resolution of the Plenum of the Supreme Court of the Russian Federation of 23.04.2019 No. 10 “On the Application of Part Four of the Civil Code of the Russian Federation” “While considering the cases on the recognition of the intellectual rights, the legislation being in effect at the time of the appearance of the relevant right shall be applied.”
As it follows from Paragraph 27 of the said Resolution, regarding the objections against granting the patent ... the grounds for the recognition the patent as void ... shall be determined on the basis of the legislation being in effect on the date of filing the application with Rospatent.
The similar rules shall be applied also at the consideration by the court of the disputes on the defence of the rights to the subject matters of intellectual property, while establishing the scope of the legal protection. The conditions of the industrial design patentability, the procedure for the registration, entering the State Register and granting a patent, the scope of the legal protection are regulated by that law and in that version, which has been in effect on the date of filing the application for granting a patent for an industrial design. The law does not have retroactive effect.
That procedure for resolving the disputes regarding the industrial design shall be applied, which is established by the legislation on the date of applying to the court for the defence of the right.
Thus, the scope of the protection of the intellectual rights to the industrial design is determined by the combination of the essential features of the industrial design, which have been reflected on the images of the product appearance contained in the patent for an industrial design.
Prior to the amendments into the Civil Code of the Russian Federation in 2015, the scope of the protection has been determined by the combination of the features of the industrial design being reflected both on the appearance of the product and in the list of the essential features. Thereby, all essential features have been listed in the patent and it is necessary to use this list for the purposes of a comparative analysis of the “old” patents.
This position is due to the fact that during carrying out the examination to establish the claims of the applicant, Rospatent has taken into account both the product appearance reflected on the images, and the essential features listed in the list of the industrial design.
If at the stage of the examination being carried out on the date of filing the application, the scope of the legal protection of the industrial design has been determined in one way, then, taking into account the fact that the law does not have retroactive effect, a different approach to determining the scope of the protection/defence shall not be allowed.
The list of the essential features is included in the patent along with the images. The patent certifies the exclusive right to the industrial design, which is characterized by the essential features listed in the patent.
The “new” patents do not contain this list. And while carrying out the comparative analysis, the plaintiff must establish all essential features by himself. In practice, no one bothers with this, but limits himself to the establishment of only distinguishing features.
The existence of the exclusive right is established, the scope of the protection is determined, let us move to the violation criteria.
In accordance with Paragraph 3 of Article 1358 of the Civil Code of the Russian Federation “The industrial design shall be recognized as used in the product, if this product contains all essential features of the industrial design or the combination of the features that makes the same general impression as the patented industrial design on an informed consumer, provided that the products have the similar purpose.”
In order to make a conclusion on a violation of the exclusive right to the industrial design, it is necessary to establish one of two circumstances
- the product contains all essential features of the industrial design
- the product contains the combination of the features that makes the same general impression as the patented industrial design on the informed consumer, provided that the products have the similar purpose.
As a rule, in practice, there are the violations of the exclusive right, when the products make the same visual impression on the informed consumer.
In support of the requirements for the defence of the exclusive right to the industrial design, the proof may be submitted that the combination of the features of the product and the industrial design makes the same impression. Here, it is necessary to take into account the fact that the legislator distinguishes the subject, whom the same impression should be made on. Namely, it should be not just a consumer, but the informed consumer, among whom the hypothetical person is included by the normative act, who will use the product, in which the industrial design is embodied, who demonstrates an interest to the products of the same or homogeneous purpose and, as a consequence, who has the knowledge about what features of the appearance are usually inherent to such products.
So, what proof will be acceptable – an opinion prepared by the results of a patent examination or an opinion prepared by the results of a sociological survey among the informed consumers.
In view of the fact that the industrial design is a subject matter of the patent right, the assessment of its protectability in view of the previously known products can be given by a competent specialist with an appropriate education, qualifications and experience. In this regard, it seems appropriate to carry out the analysis by a qualified patent attorney. While carrying out the analysis and making conclusions, the patent attorney will be guided by the applicable law.
A radically opposite by its legal nature opinion is the opinion of the organization, which can carry out the sociological survey among the persons, who do not have special qualifications, but who, being the informed consumers, can express their opinion.
Both proofs will confirm the use in the product of the industrial design patented in an established manner.
In conclusion, it is necessary to advise paying due attention to the proofs of the violation. The connection between the violator (defendant) and the appearance of the product, which is being introduced into the civil circulation must be traced from the documents submitted. That is, a consignment note with the name of the product is not enough, it should be clear from the proof what particular product, its appearance, has been used in the promotion of the product.
We are slow to saddle up, but ride fast. The same proverb may be applicable to the disputes on the subject matters of the patent rights. Meticulous preparing the proofs can be a key of the successful judicial case.