Andrey Zharov, Vitaliy Orikhon
Patent Counsels for IPR GROUP
An industrial design is the result of human creativity in the field of art; the appearance of a product of industrial or handicraft production, in other words, design.
Industrial designs are characteristic combinations of shapes, colors and lines that give a product its unique, distinctive appearance, that makes it attractive to the visual and tactile perception of the consumer.
If we consider the importance of obtaining protection for industrial designs in business, then the registration of an industrial design demonstrates the interest of the patent owner in the market, which in turn increases the commercial value of the product and affects its profitability on the market.
As demonstrated by the practice, patent protection of industrial designs should be an integral part of any business strategy of manufacturing enterprises, as it greatly contributes to the profitability of the funds invested in the creation and commercialization of attractive and innovative products. It also aids in creating a positive image for the company, as industrial designs serve as a commercial asset.
Patent protection of an industrial design gives its owner exclusive rights to the industrial property object, such as the right to dispose at his own discretion, to prevent the manufacture, sale or import by third parties of products embodying or incorporating a design that is fully or substantially copied (depending on the jurisdiction) with the protected design, if such actions are taken for commercial purposes.
Effective legal protection of industrial designs allows inventors and manufacturers to achieve a fair return on invested capital, and confidence in the security of their creative idea. It pushes the development of companies, and also affects the movement of creative components in the world as a whole. The rules of such an “intellectual game” affects fair competition in industries and fair-trading practices in markets everywhere.
It is worth noting that quite often, industrial designs are compared with trademarks as they are both essentially the result of creative work of designers. Still, it is important to understand that formal legal point of view, these objects are different. The main functions and scope of the legal protection of industrial designs and brands vary significantly.
As mentioned above, an industrial design is the appearance of a product. A trademark on the other hand, is a means for individualizing a product and/or service.
The primary function of industrial designs is to provide a representation of the appearance or ergonomics of a product to the visual and tactile perception of the consumer.
The primary function of a trademark is to provide the possibility of distinguishing goods and/or services, among other similar goods and/or services, by individualizing the manufacturer.
In other words, the industrial design aims to highlight, to give individuality due to the appearance of the product, and the trademark affects the consumer at the level of automatic recognition of the manufacturer’s brand itself.
The scope of legal protection of industrial designs is determined by the combination of essential features presented in the product images.
The scope of the legal protection of trademarks is determined by the image of the mark and the list of goods and services in respect of which the mark will be used, according to the International (Nice) Classification of Goods and Services.
In turn, industrial designs also have their own classification, known as: International Classification of Industrial Designs (Locarno).
The main similarities of industrial designs and trademarks are that they can be identified visually, and there are even cases when the same object can be both an industrial design and a trademark (combined), as well as an industrial design that may already contain a registered trademark.
As an example, we have here industrial design No. 36136 registered in Ukraine (view 6) and the trademark No. 252309, the images of which are presented below:
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The industrial design No. 36136 |
The trademark No. 252309 |
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As you can see, the images of the bottles are entirely identical. Still, from a legal point of view, the design is considered as an object of artistic construction, and the brand as a means of individualization. Also, the industrial design contains the verbal trademark of Ukraine No. 11942 “MORSHINSKA”, which together gives a holistic view of the product.
In this case, the owner of the indicated industrial design and trademark decided to register the bottle as two objects of intellectual property, which provided him with a wider scope of rights.
Patentability criteria for industrial designs
Depending on the legislation of a particular state, industrial designs must meet patentability criteria such as novelty and originality.
Examinations from different jurisdictions evaluate the criteria for patentability of industrial designs in different ways.
As a rule, an industrial design is new if the combination of essential features of the appearance of the product is not known from information that has become publicly available before the priority date of the industrial design. The essential features of an industrial design are the characteristics of the appearance of the product, which determine its aesthetic features, such as, the contours of the product, location, shape of elements, texture, color, color combinations, etc.
An industrial design is original if its essential features are due to the characteristics of the product, in particular, if the information that has become generally available in the world before the priority date of the industrial design does not contain a solution to the appearance of a product of a similar purpose that produces the same general impression on a potential consumer as the protected industrial design.
To determine the conformity of the declared industrial images with the criteria of patentability, a substantive examination is carried out in some countries. In some other countries however, the substantive examination is optional and carried out at the request of the applicants. In certain other countries, a substantive examination for industrial designs is not provided for by law, as a result, patents are granted on the basis of successful completion of formal examinations, under the responsibility of the applicants.
The liability of the applicant implies that the applicant guarantees that his industrial design meets the criteria of patentability and does not violate the rights of third parties. If the applicant has nevertheless committed a violation, this will serve as the basis for the subsequent cancellation of this patent.
Attention should be paid to verification of compliance of industrial designs with the conditions of patentability, namely, the methodology for conducting the substantive examination.
Regarding the novelty of the industrial design, the examination conducts an information search in order to perform a comparative analysis of the essential features of the claimed industrial design and its closest analog.
As for originality, the verification of originality differs from the verification of novelty in that, if the essential features of industrial designs are compared when checking novelty, then when checking the originality, the general impressions made by the industrial designs on the potential consumer are compared to discover if they cause a difference in perception. In other words, if, in the expert’s opinion, the general impressions of the claimed design will be similar (similar) to the impressions of the already known product, then the claimed industrial design will not meet the patentability criterion of “originality”, and as a result, will not be registered.
Matching the general impressions produced by industrial designs is sufficient for the examination, to deny the originality of an industrial design. At the same time, the compared essential features of two industrial designs can differ in significant elaboration, however, affect the general presentation of products in one direction.
What is such an impression? This is an image, a reflection, or a trace left in a person’s mind by surrounding objects, persons and events.
In other words, each person’s impression of the same item/product can be completely different, therefore when checking compliance with such a patentability criterion as originality, two different experts may have two completely different opinions regarding the originality of the claimed product, which concludes that the “originality” of an industrial design is a subjective criterion, which entirely depends on the individual perception.
An example we can consider is a case from our practice regarding the RF application for an industrial design No. 2018503136 (patent No. 116952 “Guide bar with a hand shower holder”, owner – GROE AG (DE)).
Resulting from the check for compliance with the conditions of patentability, in the opinion of the substantive examination, the registration of EM 001188064-0013 (hereinafter D1) had the same dominant essential features that form the same visual impression and were so similar to the claimed product that they were visually indistinguishable, therefore, the claimed solution did not correspond with the patentability condition of “originality”.
Below are the images of the claimed and opposed products:
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Patent No. 116952 |
EM 001188064-0013 |
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Our experts conducted a detailed analysis of the products, and define the following significant differences:
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Claimed product |
D1 |
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In the claimed product, the fastening elements are not made at the ends of the rod, but somewhat distant from the ends of the rod (1), smoothly conjugated with the rod (2), and also in thickness smaller than the rod (3). In the product D1, the fasteners are located directly at the ends of the rod and are equal in thickness (4) to the thickness of the rod.
In the claimed product, the fasteners are not removable (2), while in D1 the fasteners are put on the bar, which in turn is characterized by the presence of a groove (5), which indicates the thinning of the bar. Perhaps this feature is more technical, but it certainly affects the overall visual impression of the claimed product.
In the claimed product, the cylindrical rotational element is perforated (6). In the product D1, the cylindrical rotational element is made smooth, as well as with a protruding antenna (7).
The examination took the comments we made into account. They also recognized the differences we indicated as significant, and as a result, gave a positive decision on the readiness to grant a patent and subsequently, a title of protection was registered.
Indeed, it is possible that at first glance both products are quite similar, but when examined in detail, it is undoubtedly clear that they are different, which in turn proves the subjectivity of evaluating such a patentability criterion as “originality”.
The requirement of unity of industrial design
An application for a patent for an industrial design should relate to one industrial design or to a group of industrial designs that are so interconnected that they form a single creative concept and, when evaluating a group of industrial designs together without effort, it should be understood by many essential features that they are similar.
Regarding the requirement of unity, the approach to determining this varies depending on the department,
As an example, we present a product called “Gun for polyurethane foam”, which has 3 options (author and owner of WANG, Jun (CN)). This product was submitted for registration as industrial designs in Russia and Ukraine, in one application, which had three versions.
Below are images of all product embodiments:
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View 1 (general view 3/4) |
View 2 (general view 3/4) |
View 3 (general view 3/4) |
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The function of establishing the conformity of industrial design to the requirement of unity is carried out by a formal examination.
If the requirement is not met, then the formal examination issues a corresponding request with the requirement to eliminate the non-compliance.
Most often, upon receipt of such requests, applicants decide to split the application by highlighting one or another version of the product into a separate independent application (highlighted application).
As for the product mentioned above, it has been successfully registered in Ukraine. Patent for industrial design No. 40767.
The examination in Ukraine did not raise any questions regarding the unity of the claimed embodiments of the product.
However, concerning the application in Russia, the Russian Patent Office issued a request, according to which, the application did not meet the requirement of unity. According to the Russian Patent Office, the differences between the claimed product versions were significant. Therefore, all three product versions were separate products and should be considered separately from each other.
The applicant decided to split the application and select all the execution options as separate applications.
At the time of writing this material, the Russian Patent Office issued positive decisions on readiness to grant a patent for all versions of the product.
In addition, I would like to note the practice with regard to international registrations under the Hague procedure and methods of overcoming registration refusals.
With another example, consider the international registration of DM / 201 077, under the name “Bus”, which is owned by MAN Truck & Bus AG (DE), which was refused registration in the Russian Federation due to violation of the requirement for the unity of an industrial design.
Below are images of all product embodiments:
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Variant 1 (image 1.6 – general view 3/4) |
Variant 2 (image 2.6 – general view 3/4) |
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Variant 3 (image 3.6 – general view 3/4) |
Variant 4 (image 4.6 – general view 3/4) |
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Variant 5 (image 5.6 – general view 3/4) |
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According to the Russian Patent Office, the differences between the claimed product options were significant. Therefore, all product options were separate products and should be considered separately from each other.
We analyzed the images of all variants of product sales in detail. In our opinion, in this case, the registrant had a basis to challenge the opinion of the expert, since there were differences in product sales, which could be described as performance nuances, and in general, are united by a single creative concept. However, to overcome the refusal of registration, the owner listened to the opinion of the Expertise and decided to split the application, selecting all execution options as separate applications.
As a result of this decision for the territory of Russia in the international registration, the examination considered only the first version of the product’s sale, and the 4 other options were successfully registered as independent industrial designs in the Russian Federation, and patents were issued for them.
Industrial design image requirements
The requirements for images that are provided with applications for industrial designs are quite simple, but it should be understood that a set of images should give the complete picture of the set of essential features of an industrial design that determines the scope of legal protection requested by the applicant.
So, for example, in some jurisdictions, the number of types and images in applications for industrial designs is not limited; however, in Russia, this issue is clearly regulated.
The question of how many types of images should be presented is decided by the applicant, but this number is limited to seven images, namely: a general view of the product in 3/4 view from the front, front, back, left, right, top, bottom.
It should also be noted that images of an industrial design should not contain dimensions. In some jurisdictions, such as Ukraine, images should not contain dashed lines that indicate objects that are not claimed.
In case of non-compliance with the requirements, the examination will issue requests, which in turn carry additional costs. Therefore, it is recommended to consult with a patent attorney who has experience in practice and expertise in a particular jurisdiction before applying, in order to avoid any unexpected Office Actions and as a result an extra cost.
In conclusion, we would like to note the following points:
We hope that our comprehensive review of industrial designs will aid specialists, as well as individual and corporate applicants, to better understand the features of the preparation and consideration of applications for industrial designs, which will provide more effective protection of rights to their designs.
