Challenging a group of industrial designs. Pros and cons of patenting the variants

Far from many companies formalize the rights to the subject matters of intellectual property. In order to register a trademark or to obtain a patent for an industrial design, it is necessary to be patient, since obtaining the desired document is preceded by a fairly long examination procedure.

In addition to the time, obtaining the patent is accompanied by the financial expenses, which primarily include the state fees charged for almost all actions of Rospatent, in particular, for filing an application, carrying out an examination, registering and granting a protection document. Since obtaining the patent is often associated with the difficulties in formalizing the application documents, many companies turn to professional patent attorneys for help, what also increases the cost of this arrangement – obtaining the patent.

For thrifty persons in terms of the time and money, the legislator has thought a possibility to include simultaneously several industrial designs forming a group in one application for a patent for an industrial design. Sometimes it is justified, convenient and economical. Patenting the group of industrial designs has its pros and cons. Although the author of this article sees mostly cons and he practically does not see pros.

Those, who make a decision to formalize properly their rights to the results of the intellectual activity, should understand how these rights will be protected in the future and how to defend them.

The legal protection of the industrial design can be obtained on the basis of the patent, and before the patent is granted, the examination will be carried out in respect of the claimed industrial design. The requirements lodged to the industrial design and the group of industrial designs are different, it is more difficult for the group of industrial designs to undergo the examination.

In accordance with Paragraph 1 of Article 1352 of the Civil Code of the Russian Federation[1]“The solution of the appearance of the product of an industrial or handicraft manufacture shall be protected as an industrial design.”

The industrial design shall be granted the legal protection, if it is new and original according to its essential features.”

In accordance with Paragraph 3 of Article 1352 of the Civil Code of the Russian Federation “The industrial design shall be original, if it’s essential features are due to a creative character of the peculiarities of the product, in particular, if it is unknown from the data that have become available worldwide before the priority date of the industrial design, what is the solution of the appearance of the product of the similar purpose that makes the same general impression on an informed consumer as the industrial design that has been reflected on the images of the appearance of the product.”

An application for the state registration of the industrial design must relate to one industrial design or to the group of the industrial designs that are interconnected so that they form a single creative concept (a requirement of unity of the industrial design) (Paragraph 2 of the Requirements to the application documents[2]).

The industrial designs of the group form a single creative concept, if the group consists of .... the industrial designs, which are the variants of the solution of the appearance of the product that are different in the nonessential features and (or) the features that determine a colour combination, provided that all the industrial designs of the group belong to the same class of the International Classification for Industrial Designs adopted by the Locarno Agreement concluded on October 8, 1968 in the city of Locarno (hereinafter referred to as the ICID).”

When checking novelty and originality, the whole combination of the essential features of the industrial design represented on the images of the appearance of the product is taken into account (Paragraph 70 of the Rules[3]).

 If a group of industrial designs is claimed, a check of patentability is carried out in respect of each of the industrial designs included in it. The patentability of the group of industrial designs can be recognized, only when all the industrial designs of the group comply with the patentability conditions of an industrial design and the requirements (Paragraph 80 of the Rules).

If at least one industrial design of the group does not comply with at least one requirement or the patentability condition, a decision is made to refuse to grant a patent (Paragraph 92 of the Rules).

So, it can be assumed that the applicant files the application for the grant of a patent for a group of the industrial designs, which are the labels for the products. Generally, the labels have the same compositional structure and the same artistic concept. However, the labels are made in different colours (dark blue, green, light blue, pale green, yellow) and they have different figurative elements (an element in the form of the sun with different rays). In this case, all elements / features have the same spatial location on the label.

According to the examination results, if the principle of unity is complied, the Federal Service for Intellectual Property (Rospatent) may grant a patent for an industrial design.

If the patent is granted for the group of industrial designs, this indicates to the fact that the variants for the solution of the appearance of the products are so much interconnected that they form a single creative concept. The above said allows asserting that all the features, in which the variants of the group differ, are nonessential and the difference is achieved by changing the colour of each variant and through the use of various figurative elements. 

The above assertion should be taken on as an axiom. One patent may be granted for the group of industrial designs, only if the different features are referred to the nonessential ones. If the different features are essential, the industrial designs should be recognized as independent, and in this case, they should be patented separately.

In this regard, when filing the application for the group of industrial designs, the applicant limits his claims independently. If we assume that the independent application would be filed for each of the labels, then the colour and the different figurative elements could be considered as the essential features. In this regard, it would be more difficult to challenge each patent individually, than the single patent for the group of industrial designs. This is due to the following.

The patent for an industrial design may be challenged and invalidated, if it does not comply with the patentability conditions “novelty” and “originality.” To conclude on the presence or absence of “originality,” it is necessary to establish, whether the combination of the features makes the same visual impression.

Since a general impression is formed due to the essential (dominant) features, an assessment, that is, “weighing” the contribution of each essential feature in the general impression helps to establish a coincidence (or inconsistency) of the general impressions made by the compared industrial design and the trademarks.

At the same time, any features of the appearance of the product that influence on the visual impression are taken into account in the formation of the general impression.

Let us assume that in the considered case with the group of industrial designs, a source has been identified from which the appearance is known, which is made in red and in which there is no the figurative element in the form of the sun.

Despite the peculiarities of the industrial design, which are created by the colour changes and the presence of the figurative element, it is not possible to conclude that the combination of the essential features of the industrial design reflected in the images of the appearance of the product differs from the combination of the essential features of the appearance of the famous product of the same or similar purpose. This conclusion is made in relation to the provisions of Paragraph 2 of the Requirements to the application documents, according to which the industrial designs of the group can be different only by the nonessential features, which in turn cannot influence on the general visual impression, when comparing the combination of the features of the industrial design and the opposed product.

In this regard, there are the reasonable grounds to believe that all the industrial designs of the group do not comply with the patentability condition “originality.” However, even if any variant due to the colour or other feature is recognized as capable of making the different visual impression on the informed consumer, it does not make it possible to maintain the legal protection in respect of this variant, because it will be contrary to the principle of unity of the industrial design and it will be a violation of Paragraphs 80, 92 of the Rules.

In the case of filing the application in respect of each of the industrial designs, it might be possible to maintain one or all of the patents.

If the patent for the group of industrial designs is challenged and there is a risk of invalidating it, it is possible to try to maintain at least a part, having applied Paragraph 4.9 of the Rules of the Industrial Property Rights (IPR)[4], according to which, when considering an objection to the grant of a patent for an industrial design, the Board is entitled to suggest that the patent holder should amend the list of the essential features of the industrial design, if the challenged patent is to be invalidated completely without these amendments, and in case of amending them, the patent may be invalidated in part.

In the case if the Board of Rospatent considers that, despite the principle of unity, the objection contains the grounds for recognizing one or more variants of the group of industrial designs under the challenged patent as not complying with the patentability condition “originality,” the list of the essential features of the group of industrial designs under the challenged patent may be amended, as a result of which the challenged variants can be excluded. If the amendments are made and the variants that are recognized as unprotectable are excluded, the legal protection of the industrial design under the patent may be valid in respect of other variants.

It is obvious that there are certain pros and cons in patenting and defending the rights, but the advantages of patenting each industrial design are obvious.