Definition of the Essential Features of an Industrial Design

Article 1352 of the Civil Code of the Russian Federation defines an industrial design as a solution to the appearance of an industrial or handicraft product.

The essential features of an industrial design are the features that determine the aesthetic features of the appearance of the product, in particular, the shape, configuration, ornament, combination of colors, lines, contours of the product, texture or texture of the material of the product (Article 1352 of the Civil Code of the Russian Federation).

Why is it important to identify essential features?

• Legal protection of an industrial design

A product of the appearance of a product is protected as an industrial design if it is new and original in its essential features.

The primary essential features of the product are determined by the expert when checking the compliance of the appearance of the solution applied for registration with the patentability conditions "novelty" and "originality".

At the same time, conformity verification includes the identification of the closest analogue from among the analogues found as a result of the information search, as well as a comparative analysis of the essential features of the industrial design and the closest analogue in order to determine the compliance of the industrial design under review with the patentability criterion "novelty".

Therefore, the correct and correct definition of the essential features of an industrial design is necessary for the provision and further preservation in force of legal protection of an industrial design.

• Establishment of the fact of infringement of the exclusive right to an industrial design

Article 1358 of the Civil Code of the Russian Federation establishes that an industrial design is recognized as used in a product if this product contains all the essential features of an industrial design or a set of features that produces the same general impression on an informed consumer as a patented industrial design makes, provided that the products have a similar purpose.

Thus, the correct and correct determination of the essential features of an industrial design is also necessary to establish the fact of infringement of the exclusive right to an industrial design.

How to determine the essential features of an industrial design?

Essential and non-essential features

Clause 72 of the Rules determines that the features of the appearance of the product are recognized as essential features if they determine the aesthetic features of the appearance of the product, being dominant, and determine the overall visual impression.

Dominant features include elements of appearance that clearly stand out from the features that form the composition by their size, shape, configuration, imagery, tone, color and other properties.

The essential features of an industrial design, as a rule, are dominant and therefore leave a visual impression.

The above paragraph of the Rules also establishes that non-essential features of the appearance of the product include such barely distinguishable, inexpressive features of the appearance of the product, the exclusion of which from the set of features of the appearance of the product does not lead to a change in the overall visual impression.

Mental exclusion or inclusion of features characterizing the nuanced features of the product from the totality/totality of the essential features of an industrial design cannot lead to a change in the visual impression produced by the appearance of the product, since these features do not form a new visual image, do not individualize the solution and, as a result, do not determine the creative nature of the product. A similar legal position is set out in the Resolution of the Presidium of the Intellectual Property Rights Court dated 06.03.2019 in case No SIP-200/2018.

Thus, the criteria for classifying a feature as essential and immaterial are presented below:

• Essential feature: dominance; affect the overall visual impression;
• Non-essential feature: indistinguishability, inexpressiveness; exclusion does not affect the overall visual impression.

In addition, the courts also note that the essential features are determined regardless of the chosen analogue, they are inherent in the industrial design as such, characterizing it in itself. A similar approach is given in the resolutions of the Presidium of the Intellectual Property Rights Court dated 25.01.2024 in case No SIP-664/2023, dated 02.02.2024 in case No SIP-689/2023, dated 02.02.2024 in case No SIP-649/2022, dated 02.02.2024 in case No SIP-672/2023.

Thus, when determining the essential features, it is important to proceed from the dominance of such a feature and its influence on the overall visual impression.

Features due solely to the technical function of the product

In addition to essential (dominant) and non-essential (nuanced) features, there are also features that are due exclusively to the technical function of the product.

According to Article 1352 of the Civil Code of the Russian Federation, features due exclusively to the technical function of the product are not protected features of an industrial design. Solutions, all the features of which are due exclusively to the technical function of the product, are not granted legal protection as an industrial design.

If part of the features of the appearance of the product is due exclusively to the technical function (functions) of the product, legal protection may be granted to such a solution as an industrial design. However, in this case, the features due exclusively to the technical function of the product are recognized as unprotected features of the industrial design.

In accordance with the Guidelines, solutions that are all due solely to the technical function of the product generally include solutions for the appearance of the product that are not visible in normal use. Normal operation is defined as the operation carried out by the end user and does not include operation related to the creation, maintenance and repair of the product.

Products, the individual features of the appearance of which are due exclusively to the technical function of the product, may include products of the same type, having the same purpose, and manufacture using national or interstate standards. Examples of products with such features include various electrical connectors manufactured using standards.

Features that are reflected only in drawings, diagrams or confectionery cards are not taken into account as essential features of an industrial design.

The Guidelines also establish that features due solely to the technical function of the product can be identified by analyzing the analog range of products for similar purposes. The presence of repetitive features, as a rule, is due to the fact that they perform a technical function in the product. If such structural elements do not have aesthetic features that make it possible to distinguish them from each other, they can be attributed to the features of an industrial design, due exclusively to the technical function of the product.

Features that characterize an industrial design and are not recognized as due to creative nature

In accordance with paragraph 75 of the Rules, the essential features characterizing an industrial design are not recognized as due to the creative nature of the features of the product if:

• The set of essential features of the claimed industrial design, reflected in the images of the appearance of the product, including its three-dimensional model in electronic form, makes the same general impression on an informed consumer as the set of features of the appearance of a well-known product of the same or similar purpose.

An informed consumer is understood as a hypothetical person who will use a product in which an industrial design is embodied, who shows interest in products of the same or similar purpose and, as a result, has knowledge of what features of appearance such products usually have.

When comparing the general impressions produced by the claimed industrial design and the opposing industrial design, information on known solutions determining the appearance of products of the same or similar purpose (analog series) is taken into account and the limitations of the authors' ability to develop a solution for the appearance of the product for this purpose are taken into account, related, in particular, to the technical function of the product or its element and standardized requirements for the product. if any (degree of freedom of the designer);

• the set of essential features of the industrial design, reflected in the images of the appearance of the product, including its three-dimensional model in electronic form, characterizes the solution of the appearance of the product as a solution consisting of:

- creation of the shape of the product in the form of a simple geometric figure or a body such as a circle, ring, polygon, sphere, cone, pyramid, prism, parallelepiped, torus, etc., without making any changes to these geometric figures or bodies;

- repetition of the shape inherent in products of a certain purpose, and (or) the use of another material, in particular for the purpose of imitating a known appearance (for example, a product made of polymer (artificial) material, imitating a product traditionally made of wood or other natural materials);

- copying the appearance of well-known products for other purposes and another person, architectural structures, natural objects, etc., without the use of stylization and processing techniques;

- compilation of a set (set) of separately known products without changing their appearance;

• the set of essential features of an industrial design reflected in the images of the appearance of the product, including its three-dimensional model in electronic form, differs from the set of essential features of the appearance of a well-known product of the same or similar purpose with features that are created due to:

- changes only in the dimensions of the entire product (scale of the product) with the preservation of all its other features (shapes, proportions of constituent parts and (or) elements, color solution, etc.);

- changes only in the color of the entire product, but not in the color solution;

- changing only the number of elements of the same type without changing the structure or system of their location in the composition of the appearance of the product and without affecting the aesthetic features of the solution of the appearance of the product;

• the set of essential features of the industrial design reflected in the images of the appearance of the product, including its three-dimensional model in electronic form, differs from the set of features of the appearance of a well-known product of the same or similar purpose by one or more essential features, and in the publicly available information there are solutions containing features that coincide with the essential distinguishing features of the claimed industrial design and determine the presence of the same aesthetic features of its appearance that are inherent in the claimed industrial design.

Thus, the definition of the essential features of an industrial design is important both for the provision and further preservation in force of legal protection of the industrial design, and for the subsequent protection of the exclusive right to the industrial design.