Ukraine: Industrial design law overhaul

The Ukrainian industrial design legislation was revised substantially in order to improve the mechanism of industrial design rights protection and harmonize it with EU legislation.

On 16 August 2020, the Law of Ukraine “On Amendments to Certain Laws of Ukraine Concerning Strengthening of Protection of Rights to Trademarks and Industrial Designs and Combating Patent Trolling” (“Law“) became effective and established new requirements for industrial design registration, introduced protection of unregistered designs, post-grant opposition procedure and other important changes. 

Key takeaways

The Law introduces a number of important changes, including:

New criterion for protection

In addition to novelty, the Law requires the designs to have individual character to meet the protectability criteria.
A design has individual character if the overall impression it produces on an informed user differs from the overall impression produced on such a user by any other design that has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. In assessing individual character, the degree of freedom of the author in developing the design is taken into consideration.

Non-protectable objects

The list of objects that cannot be protected as designs has been refined and now includes the following:

• objects of unstable shape consisting of liquid, gaseous, bulk or similar substances, etc.
• the result of intellectual, creative activity in the field of artistic design, incorporated or applied in a component part that is not visible during normal use of a product
• features of appearance of a product that are solely dictated by its technical function
• features of appearance of a product that must necessarily be reproduced in their exact form and dimensions to permit the product to be mechanically connected to or placed in, around or against another product so that either product may perform its function

Design certificate

The Law introduces a new document “design certificate” instead of a patent certificate, which was issued previously for protected industrial designs. The design certificates are issued only for the designs registered in accordance with the Law.

Unregistered designs

Designs may be also protected without registration, although they should meet the protectability criteria. An unregistered design is considered protected as of the date it was first made available to the public.
An unregistered design enjoys a shorter term of protection then a registered design and gives its owner only the right to prevent unauthorized copying.

Term of protection

The duration of registered design protection now amounts to five years from the date of filing. This term may be renewed up to a total term of 25 years. The renewal request should be filed six months prior to the expiration of protection.

The duration of protection for unregistered designs amounts to three years as from the date the design was made available to the public in the territory of Ukraine.

Limitations of design rights

New exceptions from design rights were introduced:

• importation of spare parts and accessories for the purpose of repairing ships and aircraft registered in another country when these temporarily enter the territory of Ukraine
• acts of reproduction for illustrative or educational purposes, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source

Multiple application

The Law allows filing one application for registration of several designs provided that:

• the number of applied-for designs does not exceed 100 items
• the designs belong to the same class of the International Classification of Designs
• the applicant is the same person with respect to each design
• each design has the same author

If either of the first two criteria is not met, an applicant should divide its application within a three-month period of receipt of such notification from the examination body. If not divided, the examination would be held only with respect to the designs belonging to the same class as the first design in the application and within the quantity limit.

E-prosecution

The possibility of e-prosecution, including e-filing, is now also fixed at the legislative level.

Post-grant opposition

The design certificate may be cancelled through administrative proceedings held by the Appellate Chamber. Any person may file such a request during registration validity term or after its expiration, provided the registered design does not meet the protectability criteria.

The Appellate Chamber considers the opposition within three months of its receipt. Either party may also challenge the Chamber’s decision in the court within two months of receipt of such decision. 

Background

In the summer of 2020, there were a number of amendments to several IP laws in Ukraine. The adoption of these long-discussed changes in patent, design and trademark legislation is part of an ongoing process of implementation of the EU-Ukraine Association Agreement and the harmonization of Ukrainian law with the EU. For more information about the main changes, please see our legal alerts below

• Ukraine establishes new National Intellectual Property Authority
• Ukraine: Trademark law makeover
• Ukraine: Patent law reform

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