Registrability in Russia: alike objects as trademark and industrial design

Registration of a trademark abroad allows the right holder to provide the necessary level of protection of the designation for trade on the territory of a foreign country. If we consider Russia as a foreign country from the perspective of the trademark owner, it should be noted that the visual identity registered in Russia, regardless of the citizenship of the right holder, the same protection is provided, regardless of whether the company is Russian or foreign.

In certain cases, when desired, the right holder may strengthen the protection of the object. To do so, it is possible to register it with Rospatent not only as a trademark but also as an industrial design. According to the current Russian legislation, a number of objects have been simultaneously regulated by the rules of law on trademark and the rules of law on industrial design.

According to paragraph 1 of Article 1482 of the Civil Code of the Russian Federation (hereinafter the Civil Code): “Verbal, pictorial, volumetric and other designations or combinations thereof may be registered as trademarks”. At the same time, clause 1 of Article 1352 of the Civil Code states: “As an industrial design, the solution of the external appearance of a product of industrial or artisanal and handicraft production is protected”. Thus, the analysis of the above rules of law leads to concluding that some objects may simultaneously correspond to both the description of trademarks and the description of industrial designs. For example, the original form of product packaging, unique graphic design of the appearance of products, and the like may become both a trademark and an industrial design. 

Do the Russian legislative bodies consider such a situation in detail? No. Is there a possibility of simultaneous registration as two different objects? Yes, however, it is important to note that in such a case, the rules of the Civil Code contain an indication of the possibility of such actions only if the owner or applicant of the trademark and the owner of industrial design are the same person. This can be considered as a preventive measure in order to minimize the likelihood of a conflict of rights of the owners of intellectual property and the possibility of misleading consumers. 

In addition, it should be noted that as a result, in case of a positive decision of the experts of the patent office, two independent objects will be registered, and the applicant will have a certificate of trademark and a patent for an industrial design. That is why the applications for registration of these objects are filed separately. At the same time, all the stages of examination and requirements for compliance with the conditions of protectability are imposed on each object separately, in accordance with the requested protection. Thus, it is possible that in the end only a trademark or only an industrial design will be registered.

Why would the right holder try to register the object as different types of intellectual property at the same time? Thanks to this, the owner will have cross-protection, which implies simultaneous protection as different types of intellectual property, namely a trademark, and visual identity. It can also be noted that the registration of a design, in addition to the trademark, will help to minimize the likelihood of registration of a design identical to the trademark by unscrupulous businessmen.

To summarize the above, we can note the following:

• Registration of the object as different types of intellectual property allows the company to expand the scope of the legal protection of the object.
• By providing cross-protection, the right holder minimizes the risk of conflict of rights with the rights of others.
• Such protection can be considered a kind of insurance because if the protection of one type for any reason is canceled, the protection of the other type will continue.

The above conditions allow us to conclude that it is advisable and justified to have cross-protection.

Originally published on Trademark Lawyer, issue 4