At the end of June a mechanism providing for temporary protection of industrial designs was introduced into the Russian legal system. In short it requires somebody who uses an industrial design during the period of its patenting to pay compensation to the future holder of the patent. Previously, this type of protection was available only for inventions – although it is still not available for utility models, which are also patentable in Russia.
Authors of the amendments said that this measure is a good way to protect interests of fashion industry in Russia, but let’s check if this is the case.
How does it work?
The temporary protection is provided following the submission of a patent application up until the patent is granted.
If somebody uses an industrial design during the period, then the rightholder can ask the user to pay compensation. However, the rightholder can claim for the remuneration only after the patent has been issued.
It is also important that we cannot say that usage of industrial designs during their temporary protection is the same as infringement. That’s why you can claim for fair remuneration, but not for damages (including lost profits) or punitive compensation (which in patent cases can be calculated as duplicated royalties in the same circumstances or can be chosen at a judge’s discretion in the range from $150 up to $80,000 for each a violation). It is also impossible to confiscate the product, for example, in cases when counterfeit products are used.
Will it work?
The main criticism of the amendments is about their connection with economic realities of fashion industry.
You have to spend 1-1.5 year (sometimes less) to obtain a patent. But is it efficient, when the life time of your fashion collection is only a few months? As we said above the “temporary protection” is not the same as usual patent protection – it is weaker.
In comparison with foreign patent offices, in Russia the value of applications for industrial designs is traditionally less.
Design patents are really important, but it is not for every dress or every shoe a designer produces. Moreover, such patenting is not an option for small businesses or start-ups with their small collections.
Companies in fashion industry also have other ways to defend their designs without a patent:
(A) You can protect a design as a copyrighted object. However, it can be difficult to prove that items in a competitor’s collection were not independently developed.
(B) The best way (which surprisingly is still not so popular) is to initiate antimonopoly proceeding on the basis of unfair competition. You have two options: to bring a lawsuit or to submit a claim to the Russian Federal Antimonopoly Service. The latter can be more interesting as far as you have no such legal power as the law-enforcement body. After finishing administrative proceeding you can go to a court to claim compensation for lost profits.
Does the new law only cover fashion patents?
Fortunately, no. The area of your work is not a criteria to get temporary protection.
In some industries with products that have longer lifespans, for example, for electronics or home appliances, temporary protection can be more effective.
Do not forget about patent trolling. It is not so popular as abroad, but is a trend in Russia. Now you cannot be safe before the patent is granted: you have to check, is the application over you design is filed and published.
Companies also have to consider that Russian patent office (“Rospatent”) in practice has very low requirements for expertise; sometimes surprisingly basic and well-known product’s design can be patented in Russia. Be aware.
I understand some skepticism towards the new amendments. Probably, they will be more interesting for big local or international brands in Russian. Of course it doesn’t look as if the changes will bring in a new age of IP protection in the fashion industry.
When the temporary protection is available for technical decision (patented as inventions), we practically do not see any interesting dispute in this field. For now, there is no such case reviewed by Intellectual Property Court as cassation instance – it seems that this mechanism for technical decisions is not popular at all.
As IP lawyers working with the fashion industry, we look to develop court precedents and unfair competition disputes in this area. It appears that bringing a claim to the Federal Antimonopoly Service remains the most effective way to protect clients’ interests against copy-cat designs.