Objection to the Grant of Legal Protection for an Industrial Design

An industrial design is a solution relating to the appearance of a product of industrial or handicraft production. Legal protection is granted to an industrial design if, in its essential features, it is new and original (Article 1352 of the Civil Code of the Russian Federation).

Industrial designs may include:

• product packaging;
• the appearance of machinery and equipment;
• furniture, clothing, accessories;
• interfaces and design elements of products.

An objection to the grant of legal protection for an industrial design is a legal procedure that allows one to challenge the registration of an industrial design (i.e., the appearance of a product) if it does not meet the statutory requirements.

A challenge is possible in cases where the industrial design:

• effectively copies an already existing design;
• was registered in bad faith (to bypass competitors);
• is used solely to assert claims, recover compensation, or block sales. 

When an Objection Becomes Necessary

In practice, objections are most often filed in the following situations:

1. When a registered design is discovered to include a previously created design;
2. When a claim is received from the right holder alleging infringement of exclusive rights to an industrial design.

The need to file an objection arises when a third party’s industrial design creates risks for business activities, is used in bad faith, or violates the law.

Key Considerations

At first glance, the objection procedure may seem formal, but in practice it involves a number of nuances.

For example, when challenging a patent due to lack of novelty, it is not enough to simply state that the design already existed – it is necessary to collect proper evidence (catalogs, websites, dated publications, agreements with designers, etc.).

Objections against the grant of a patent for an industrial design are generally based on non-compliance with patentability criteria, namely novelty and originality. Therefore, selecting the correct grounds for the challenge is crucial.

In addition to the substantive legal aspects, formal requirements must also be observed. For instance, missing deadlines or improperly prepared documents may result in the objection being left without consideration.

Such situations demonstrate that acting independently may lead to loss of time and money, whereas professional support significantly increases the chances of success.

The key stages in handling an objection to the grant of legal protection for an industrial design include:

• analysis of the registered industrial design;
• identification of grounds for challenge (novelty, originality, good faith of the right holder, etc.);
• preparation of a reasoned objection;
• representation of the applicant’s interests before the patent office. 

Timeframes for Consideration

The procedure for examining an objection to the grant of legal protection for an industrial design by the Chamber for Patent Disputes takes on average about 4-6 months. However, this period may be extended depending on the procedural behavior of the parties and the volume of additional materials to be reviewed.

Legal Services of Zuykov and Partners

Zuykov and Partners helps to build an effective system for managing intellectual property.

With 20 years of experience, we have developed extensive expertise in working with government authorities and courts. Our specialists successfully represent clients before Rospatent, the Federal Antimonopoly Service, the Federal Customs Service, courts of general jurisdiction and commercial courts, as well as Russia’s specialized Intellectual Property Court. We understand the intricacies of these institutions and are able to effectively resolve even the most complex matters.

Our lawyers and patent attorneys provide a full range of services in the field of industrial design protection:

• preliminary assessment of industrial designs for compliance with patentability requirements;
• support in the registration of industrial designs;
• handling patent invalidation and opposition proceedings;
• claim handling and pre-trial dispute resolution;
• consultations on intellectual property protection;
• development of intellectual property protection strategies;
• representation before the Chamber for Patent Disputes and the Intellectual Property Court.

We take care of all legal matters so that our clients can focus on growing their business. Contact us for a consultation, and we will explain how we can assist in your specific situation.