Expertise/Intellectual Property

Service

Patenting Industrial Designs

The appearance of a product, packaging, label or graphical interface is filed with Rospatent as an industrial design, with the involvement of patent attorneys, so that others cannot use the design without the company's consent.

We are most often instructed by:

  • Manufacturers whose products are recognized by their design
  • Companies whose designs were created by in-house designers or studios
  • Applicants whose application has already been filed, including by another representative
  • Companies taking a product to foreign markets
  • Patent holders who need to extend or restore a patent

The information on this website is provided for information purposes only and does not constitute a public offer.

What the Service Includes

Timing and Fees
–timing on request
from ₽fee on request

Timing and fees are indicative and are confirmed when the engagement is agreed.

01 / Overview
What an industrial design provides

An industrial design patent secures the exclusive right to the appearance of a product: its shape, configuration, ornamentation, and combination of colours and lines. The right extends not to a specific item but to the design solution: products with a similar purpose that produce the same overall impression on the informed consumer fall within the protection. The scope of protection is determined by the features shown in the images of the product, and the set of images is worked out together with the designer before filing.

Packaging, labels, bottle shapes, design elements and graphical interfaces may be patented if their appearance is new and original. Solutions dictated solely by the technical function of a product are not protected as industrial designs: the construction is protected by a utility model patent.

A patent differs from trademark registration in the basis of protection. A designation is protected as an indication of the producer in respect of specific goods and services for as long as the registration is renewed; an industrial design needs only novelty and originality, and a patent is also granted for a design that is not yet known to the market. For packaging and product shapes, these forms of protection are used together.

Against copies of the design, the patent serves as the basis for a letter of claim to the manufacturer and for a request to a platform to remove the product listing.

Without documents on the applicant's rights, a patent for a design created by a designer, studio or contractor may be obtained by someone other than the company, so contracts with the authors are checked before filing.

The right to use an industrial design is granted to other manufacturers under a licence agreement, including for collaborations.

02 / Outcome
Service Outcome
  • Patentability opinionA conclusion, before the application is filed, on the likelihood of a patent being granted and on the features of the appearance to be shown in the images.
  • Industrial design applicationImages of the product and a description, in the agreed scope, filed with Rospatent.
  • Documents on the applicant's rightsDocuments under which the company, rather than the designer, studio or contractor, is named as the rights holder.
  • Responses and objectionsResponses to examiners' queries and an objection to a refusal to grant a patent.
  • Patent maintenanceMonitoring of the deadlines for paying official fees, and documents for the extension or restoration of the patent.
  • Foreign applicationsApplications in the selected countries claiming the priority of the application filed with Rospatent.

The outcome of the service is the work performed within the scope agreed with the client.

03 / Preparation
What the application is built on

  1. Materials

    The application is built on information about the subject matter and the applicant; the following points are relevant.

    • Product and imagesPhotographs, mock-ups, drawings and design variants that are planned for production.
    • DisclosureWhether the design was shown before filing: social media posts, exhibitions, catalogues, deliveries of a launch batch.
    • Authors and contractsWho created the design: in-house designers, studios, independent designers; contracts with them.
    • MarketsWhere the product will be manufactured and marketed.

  2. Assessment

    On the basis of the materials, the prospects of the examination, possible obstacles and ways of overcoming them are assessed.

  3. Plan

    For the chosen option, a plan is drawn up: the documents required, the sequence of steps and the timing.

04 / Projects
Selected Projects
01 / 04

Acting for the buyer

Intellectual property rights in the acquisition of an equipment and digital solutions manufacturer

Challenge

The buyer was acquiring shares in a foreign company that owned a Russian manufacturer of industrial equipment and digital solutions for equipment management and monitoring, as well as shares in a Russian legal entity. The acquisition of the foreign company was governed by English law.

What was done

The comprehensive legal due diligence of the Russian business covered intellectual property rights, as well as the corporate history, business operations, contractual relationships and other matters material to the transaction. The foreign ownership structure, title to the shares being acquired and the legal aspects of the buyer's entry into the existing corporate structure were analysed separately.

The structure and documents of the transaction were agreed. The findings on the Russian and foreign parts of the structure were reflected in the terms of the transaction and the arrangements for its closing.

Preparing for franchising

Consolidation of rights to a group's accounts, websites and materials before franchising

Challenge

A group of companies was engaged in extensive marketing, but its accounts, websites and rights to the materials created were registered in the names of different entities within the group. To set up franchises later, the rights had to be brought together in the group's management company.

What was done

It was established which group entity held each asset, and the transfer of rights to the management company was documented. The rights to the group's marketing assets were put in order and consolidated in the hands of a single entity.

Trademark dispute

Non-use dispute over a trademark that blocked registration of the client's mark

Challenge

The client needed to register a trademark to brand the services of a travel agency. Registration was blocked by another company's mark: that company used it for a cosmetics brand, but the protection of the mark also extended to a number of Nice classes the client needed.

What was done

Claims for early termination of the legal protection of the mark for non-use were prepared in respect of those classes. The claims were put to the rights holder at the pre-trial stage, and the dispute was settled without going to court.

Purchase of an interest

Review of an app developer's intellectual property rights

Challenge

The buyer was acquiring an interest in a company developing a healthy lifestyle app with a weekly audience of more than 1.5 million users worldwide. Comprehensive legal due diligence of the business being acquired was a key part of the engagement.

What was done

The company's intellectual property rights were analysed, as well as its corporate history, business operations and employment relationships. The due diligence findings were taken into account in structuring the transaction and preparing the contractual documentation.

05 / Questions
Frequently Asked Questions

Disclosure by the author, the applicant or a person to whom they passed the information does not destroy the novelty of the design if the application is filed within the prescribed period. The earliest date of disclosure is established, and the filing period runs from that date. If the period has expired, it is assessed whether the product has features that were not present in the version shown.

The application is taken over at whatever stage it has reached: the set of images and the correspondence with Rospatent are reviewed, the deadlines for responses and fee payments are checked, and a power of attorney is issued to the new representative. The work continues until Rospatent's decision or, if the application is refused, until the objection has been considered.

An hourly rate, a fixed fee or a combined model is used; in some cases part of the fee depends on the outcome achieved. The fee is determined by the time actually spent, the complexity of the matter and the overall timeframe of the project, and is agreed before work begins.

Key Contacts
Deni Murdalov Deni Murdalov Partner, PhD (Law), LL.M. Ilya Smirnov Ilya Smirnov Partner

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Other Services in This Practice
Trademarks Protection and Disputes Brand Transactions Licence Agreements Franchising Assignment of Exclusive Rights Computer Programs and Databases Account Disputes Domain Name Disputes Madrid System Trade Secrets and Know-How Inventions Utility Models Documents and Consultations

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