Maksym Koval, Esq.
The legal landscape for industrial designs in Ukraine has significantly changed with the introduction of the Law of Ukraine No. 815-IX “On Amendments to Certain Legislative Acts of Ukraine on Enhancing the Protection and Defense of Rights to Trademarks and Industrial Designs and Combating Patent Abuse” (the “Industrial Design Law”), which came into effect on August 16, 2020.
The Industrial Design Law introduced several critical changes to the protection of industrial designs, including new registration requirements, the protection of unregistered designs, and an administrative procedure for invalidating rights post-grant (“post-grant opposition”).
The key changes under the new Industrial Design Law are follows:
1.New Criteria for Protection
A major change in the Industrial Design Law is the introduction of new criteria for the protection of industrial designs. In addition to novelty, industrial designs must now possess an “individual character” to qualify for protection.
An industrial design is deemed to have an individual character if the overall impression it produces on an informed user differs from that of any other design that has been made publicly available before the application date or, if priority is claimed, before the priority date. The degree of freedom of the author in creating the design is also taken into account when assessing its individual character.
2.Objects Not Eligible for Protection
The Industrial Design Law specifies the list of objects that are not recognized for legal protection as industrial designs in Ukraine, including the following:
• Objects of unstable form made from liquid, gaseous, loose (granular) or similar substances;
• Results of intellectual or creative activity in the field of artistic design embodied or applied in a product that forms part of a complex product and is not noticeable during normal use;
• Features of a product’s appearance determined solely by its technical function; and,
• Features of a product’s appearance that must be precisely reproduced to enable it to be mechanically connected to or placed within, around, or against another product so that each product can perform its respective function(s).
3.Certificates for Industrial Designs
The Industrial Design Law replaces the patent previously granted for protecting industrial designs with a new document known as a “certificate of industrial design”. This certificate is issued only for industrial designs registered in accordance with the Law.
4.Unregistered Industrial Designs
Industrial designs can also be protected without registration, provided they meet the protection criteria. The legal protection for an unregistered industrial design commences from the date it is publicly made available. Unlike registered designs, unregistered designs have a shorter protection period and allow the owner only to prohibit the unlawful copying of the design.
5.Protection Period
The protection period for a registered industrial design is now five years from the application date with the option for renewal; however, the total protection period cannot exceed 25 years. A renewal request must be submitted no later than six months prior to expiration of the protection period. For unregistered industrial designs, the protection period is three years from the date the design is introduced to the market in Ukraine.
6.Limitations on Industrial Design Rights
The Industrial Design Law introduces new exceptions to industrial design rights, including:
• The import of spare parts and components for repairing vehicles from foreign countries temporarily located in Ukraine; and,
• Acts performed for illustration or educational purposes, provided the source is cited in relevant materials and the undertaking of such acts does not conflict with equitable commercial practices or harm normal usage of the design.
7.Multiple Applications
The Industrial Design Law allows the submission of a single application for registering multiple industrial designs, subject to the following conditions:
• The number of designs in the application does not exceed one hundred;
• The designs fall under the same class within the International Classification for Industrial Designs;
• The applicant for each design is one individual or entity; and,
• Each design has the same author.
If the first two conditions are not met, the applicant must submit divided applications within three months of receiving the relevant remark from the examination body. If the application is not divided, the examination will only cover designs belonging to the same class as the first design listed in the application and within a quantitative limit.
8.Electronic Document Management
The Industrial Design Law now provides for the possibility to electronically manage documents, including the online filing of applications. The application may still be filed in paper, but electronic filing speeds up the application process.
9.Administrative Invalidation of Rights (Post-Grant Opposition)
The Appeals Chamber may invalidate an industrial design certificate via an administrative procedure. Any person may submit a corresponding invalidation appeal throughout the entire term of proprietary rights to the industrial design and even after their termination based on non-compliance with the conditions for granting legal protection. The Appeals Chamber considers appeal requests within three months of receipt. A party may argue the decision of the Appeals Chamber in court within two months of receiving the Chamber’s decision.
In conclusion, the Industrial Design Law represents a substantial improvement for protecting industrial designs, bringing the legislation more closely in line with EU and global standards. The introduction of stricter protection criteria, the protection of unregistered designs and the establishment of an administrative procedure for invalidating rights are significant advancements. These changes are expected to strengthen the legal framework for industrial design protection in Ukraine, providing more comprehensive and effective protection for owners.
