Amendments to the Ukrainian industrial design law entered into force on August 16, 2020, as part of a set of laws intended to implement the requirements set out in the EU-Ukraine Association Agreement, synchronize local legislation with that of the EU and ensure legal and linguistic consistency of legal acts regulating intellectual property rights in Ukraine.
The amended industrial design law introduces individual character (along with novelty) as a new registrability requirement, creating a twofold criterion, common in the EU, which each industrial design should meet in order to enjoy protection. A design will be deemed as having individual character if the overall impression it creates on the informed user is different from the overall impression created by any other registered or unregistered design made available to the public.
The novelty criterion has also been transformed. While under the old law ‘novelty’ implied that no identical design was disclosed anywhere in the world before the application or priority date, the new law defines an industrial design as novel if no other identical registered or unregistered industrial design was previously disclosed, without specifying where the disclosure should occur geographically (whether only within or also outside Ukraine’s borders). The new law defines disclosure in the following way:
a) A registered design is deemed to be available to the public if it was published following its registration, or exhibited, used in trade or otherwise disclosed before the filing or priority date, except when these events could not reasonably have become known in the normal course of business to the circles specialized in the corresponding sector operating in Ukraine;
b) An unregistered design is deemed to be available to the public if it was published, exhibited, used in trade or otherwise disclosed, except when these events could not reasonably have become known in the normal course of business to the circles specialized in the corresponding sector operating in Ukraine.
The grace period for filing an application after disclosure was extended from six to 12 months, allowing the author, his successor in title, or a third person as a result of information provided directly or indirectly by the author or his successor in title, to disclose the design for the purposes deemed sensible to them without destroying the design’s novelty.
The law introduces two additional instances in which an industrial design will not be considered protectable. It imposes the visibility requirement (a part of a complex product which is not visible in its normal use should not be granted protection) and the non-functionality requirement (a design should not be granted protection if its features merely serve a technical purpose and must be accurately reproduced in their exact form and dimensions in order to allow interconnection with another product).
While designs which do not comply with the requirements, including novelty and individual character, could previously be invalidated in court, they can now also be invalidated before the Ukrainian IPO Board of Appeal, both when still valid and when they have lapsed.
The post-grant opposition system has been introduced as an additional interim option for parties to resolve potential issues in an administrative procedure before they resort to litigation, meaning that industrial designs can now be cancelled before the IPO Board of Appeal.
The law explicitly introduces unregistered designs as a new category and sets the term of their validity as three years following their disclosure. The law also confirms that registered designs will be valid for five years but can be renewed for a total term of 25 years. The industrial design law and the by-laws were out of sync on the issue – while the law provided for a maximum protection term of 15 years, the Decree of the Cabinet of Ministers No. 496 of July 12, 2019 allowed for a maximum of 25. The new law now brings consistency and uniformity in terms of design validity.
Another important development is the introduction of multiple design applications, allowing applicants to include up to 100 designs in the same application if they have the same owner(s) and comply with the unity of class requirement. However, the IPO will consider each industrial design separately and can make a decision to register some of the designs and refuse protection to others.
In terms of procedural formalities, the window for payment of industrial design annuities now opens six months before the deadline as opposed to two months in the past.
Finally, it is clarified that the industrial design examination will be carried out in compliance with the new law, while the application of protectability requirements will depend on the legislation in force on the filing date of the design application.