Design plays a leading role in creating competitive advantages in product sales and service delivery. The unique appearance of a product often becomes a determining factor in consumer choice, and therefore a valuable intangible asset. It is only logical that manufacturers are interested in obtaining certain guarantees that ensure their attractive designs – which have gained special popularity among consumers – will not be used by others.

There is no legal concept of design in the Russian legislation. At the same time, in dictionaries, the word “design” is understood as the activity of constructing things, machines, interiors, etc., based on the principles of combining convenience, economy and beauty.

In the Russian Federation, a design can be protected as an object of copyright (by virtue of the fact of creating the design in an objective form) and as an object of patent law (in the case of registration of the design as an industrial design).

Indeed, in Article 1259 of the Civil Code of the Russian Federation, works of painting, sculpture, graphics, design, graphic stories, comics and other works of fine art are named as objects of copyright protection.

According to the provisions of Article 1352 of the Civil Code of the Russian Federation,“the solution of the appearance of an industrial or handicraft product is protected as an industrial design. An industrial design is granted legal protection if it is new and original in its essential features. The essential features of an industrial design include features that determine the aesthetic features of the appearance of the product, in particular, the shape, configuration, ornament, combination of colors, lines, contours of the product, texture or texture of the material of the product. Features due solely to the technical function of the product are not protected features of an industrial design.”

Thus, when an author creates a design, they automatically receive copyright protection for it, provided that the design was created through the author’s creative effort and expressed in a tangible form.

This means that the author of the design from the moment of creation of his work has the exclusive right to use it in any way that does not contradict the law. At the same time, all other persons must refrain from using such design, including by copying and distributing the design, processing such design, etc. 

In the event of registration of a design object as an industrial design and obtaining a corresponding patent, the patent owner has the exclusive right to use the industrial design in accordance with the provisions of Article 1358 of the Civil Code of the Russian Federation, for example, by importing into the territory of the Russian Federation, manufacturing, using, offering for sale, selling, otherwise introducing into civil circulation or storing for these purposes products in which the industrial design is used.

At the same time, it is necessary to understand that in the event of a legal dispute, proving that the plaintiff owns the exclusive right to the design as an object of copyright is a more time-consuming process than proving the ownership of the exclusive right to an industrial design, since in the latter case the existence of the exclusive right is confirmed by a patent for an industrial design.

If a person is the right holder of both a work of design and an industrial design and the actions of third parties violate his exclusive rights, then the choice of protection of the right is the prerogative of the right holder of such objects.He can apply to the court both for the protection of his copyright and patent rights at the same time, and apply for the protection of the exclusive right in relation to one of the objects.

Such a legal approach is confirmed by the position set out in Paragraph 74 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019, No. 10 On the Application of Part Four of the Civil Code of the Russian Federation (Resolution No 10), according to which, “if an object of copyright (or a combination thereof) is registered as an industrial design with the consent of the right holder, the method of protecting the exclusive right from violations committed is determined by the nature of such violation. If the infringer commits actions to use an industrial design (Article 1358 of the Civil Code of the Russian Federation), the patent owner has the right to protect by the means provided for the protection of patent rights (Paragraph 8 of Chapter 72, Article 1252 of the Civil Code of the Russian Federation). If, simultaneously with the infringement of the exclusive right to use an industrial design, the exclusive right to use the work is violated (Article 1270 of the Civil Code of the Russian Federation), both the copyright owner and the patent owner have the right to exercise protection in the ways provided for the protection of the relevant rights (Articles 1252, 1301, Paragraph 8 of Chapter 72 of the Civil Code of the Russian Federation).”

In addition, based on the explanations set forth in Paragraph 63 of Resolution No 10, if there are several results of intellectual activity or means of individualization belonging to the same person that are interconnected: a work and a trademark in which this work is used, a trademark and an appellation of origin of goods, a trademark and an industrial design, compensation for infringement of rights to each object is determined independently.

Of particular interest is the situation where one person unlawfully registers an industrial design based on a design work copyrighted by another person and begins selling goods using the disputed design, hiding behind a patent for the industrial design.

At first glance, it may seem that if the patent owner has a document of title, then he can safely conduct his activities referring to the existence of a patent confirming the existence of an exclusive right to the design, until such a patent is challenged in the manner prescribed by the legislation of the Russian Federation. 

At the same time, according to the provisions of Paragraph 74 of Resolution No. 10, “if the registration and subsequent use of a work as an industrial design is carried out without the consent of the author of this work, the author has the right to protect his copyright regardless of whether a claim was made to invalidate the patent. At the same time, the satisfaction of the relevant claims of the author of the work does not in itself entail the invalidation of the patent.”

Based on the foregoing, the mere emergence of a person’s exclusive right to an industrial design does not exclude the fact that this person violates the copyright to the design owned by the author.