MIKHAILYUK SOROKOLAT & PARTNERS

Patent and Trademark Attorneys

Russia as a member of the Geneva Act of the Hague Agreement

The Geneva (1999) Act of the Hague Agreement entered into force in the Russian Federation on February 28, 2018. From this date many companies and designers designate the Russian Federation and apply for design protection through the Hague System.

It should be noted that under the Hague System the Russian Federation has made declaration under Article 13(1) regarding the requirement of unity of design. The effect of this declaration is that the Federal Service for Intellectual Property of the Russian Federation (ROSPATENT) can send the Notification of refusal which refuses the effects of the international registration, pending compliance with the specified requirement of unity of design.

Our company has rich expertise in the field of protection of industrial designs in the Russian Federation and will be pleased to assist any applicant as for overcoming of Notification of refusal in the Russian Federation.

The most common practice is to:
1. File a communication indicating which industrial design(s) filed in the application should be considered. Other designs claimed in the application may be filed as national divisional application(s) with the priority established according to the priority date of the parent application.

Such communication should be submitted directly to ROSPATENT through the Russian Patent Attorney within three months from the date of Notification of refusal. In case of non-receipt of communication from the applicant the examination will be conducted in respect of the design or a group of designs specified first.

2. Split international registration and file a number of new international applications, designating the Russian Federation.

However, it remains to the discretion of the applicant to decide which way is the most favorable from financial and procedural point of view.