On 21 July 2020, the Ukrainian Parliament adopted law No. 815-IX (Law) introducing significant changes – both procedural and substantive – to the Ukrainian trade mark and design laws in order to further implement the intellectual property provisions of the EU-Ukrainian Association Agreement. In this third newsletter, we look at the fundamental changes concerning the designs. This newsletter describes only part of the changes to the Design Law which, based on our experience of handling designs related cases, are usually the most relevant for clients.
Please also feel free to download the flowchart in PDF by clicking on the link here.
Under a general rule stipulated by the Law, the new regulations for designs are in effect the next day after the official publication of the Law (i.e. as of 16 August 2020) (Effective Date). All design laws and regulations which are not yet amended to comply with the Law shall remain in effect to the extent they do not contradict the Law. The relevant design laws and regulations are expected to be aligned with the Law within six months as of the Effective Date.
According to the transitional provisions, the examination of those design applications which have been filed before the Effective Date shall be conducted in accordance with the Law, whereas patentability requirements which have been in effect before the Effective Date should apply, i.e. design should only be novel.
Multiple application for designs is now possible
According to the Law, an application may include one or several designs. In case of a multiple application, (i) all designs should belong to the same class; (ii) there should not be more than 100 designs in the application; and (iii) applicant and author(s) should be the same for all designs for which the registration is sought in the application.
Individual character as a new essential protection requirement and changed approach to novelty
In order for the design to be protectable, it should not only be novel but also have the individual character. A design shall be considered to have 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 which has been made available to the public. In assessing the individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.
The approach to novelty requirement has also been changed. Before the Law, only availability or absence of all essential design features was decisive to conclude on whether the design is novel. After the Effective Date, designs shall be deemed to be identical if their features differ only in immaterial details.
In terms of novelty requirement, the Law also provides for extended and revised regulation on what should be considered as making the design available to the public.
Importantly, the Ukrainian IP Office (IPO) will continue to conduct the only formal examination of design applications. In other words, no examination on whether a design is novel and has individual character will be carried out by the IPO.
The applicant takes responsibility for the compliance of the registered design with the described protection requirements. As of the Effective Date, the design owner does not only take the risk of invalidity of the design patent (as it was the case before the Effective Date). Pursuant to Article 25(5) of the Design Law, an aggrieved person is generally entitled to claim recovery of damages caused in case the design registration is invalidated due to violation of third party’s rights. Unfortunately, the final version of paragraph 5 of Article 25 does not provide for an opportunity to claim recovery of statutory damages. According to bill No. 2258 prepared for the second reading by the Parliament, the amount of statutory damages could range from 10 to 50,000 minimum statutory salaries (the current statutory minimum salary is UAH 4,723 that is about EUR 150).
Extended list of grounds of non-registrability
The Law has extended the list of grounds of non-registrability of both the designs and their features. In particular, the followings design and its features are not registrable:
- a design applied to or incorporated in a product constitutes a component part of a complex product and invisible during normal use of the product. Normal use means the use of the product by end-user, whereas technical maintenance, servicing, and repair of the product are not treated as normal use.
- features of a product appearance are only dictated by its technical function.
- features of appearance of a product which size and shape should accurately be reflected in order for one product to be mechanically connected to another product or placed inside, around or in front of another product in the way that each product can perform its intended function. This regulation does not apply to the appearance of those products which are intended for multiple assembling or combination of replaceable products inside module construction.
Compliance with the above new requirements is expected to be examined in the course of the examination by the IPO.
Protection for unregistered designs
The amended design laws finally provide for protection for unregistered designs.
Similar to the EU, unregistered design enjoys protection within a three-year term. This term starts at the date of the first disclosure of the unregistered design in the territory of Ukraine.
Amended regulation on design disclosure
Revised Article 6 of the Design Law provides for amended regulation on what should be considered as disclosure of registered or unregistered designs. For both registered and unregistered design, it should not be considered as disclosed to a third party in case of express or implied obligation to keep confidentiality.
Moreover, a grace period during which design will be treated as still protectable has been extended from six to twelve months. The grace period is calculated as twelve months period before the filing date or priority date (if claimed).
Post-grant opposition procedure for designs
Article 251 of the Design Law provides for a post-grant opposition procedure for designs. As prescribed, any interested person has the rights to file a justified opposition with the Appeal Board of the IPO claiming invalidity of the registered design due to its incompliance with design protection requirements.
The opposition can be filed during the whole term of validity of the design registration and after the design rights are no longer in effect.
The Ministry for Development of Economy, Trade and Agriculture of Ukraine should adopt a post-grant opposition procedure for designs. Based on the transitional provisions of the Law, it expected that the procedure will be adopted within the next six months.
The post-grant opposition should be considered within three months as of receipt of the opposition by the Appeal Board and provided that the opposition filing fee has been duly paid.
The Appeal Board’s decision can be challenged by either party to the opposition proceedings to the court. The decision should be challenged within a non-extendable two-month period as of receipt of the decision.
Importantly, in order to enhance protection against patent trolling, the amended Design Law prevents repeated registration of those registered designs which registrations have been invalidated by either the Appeal Board or the court due to their incompliance with the design protection requirements or infringement of third party’s rights.
For further information, please contact Oleg Klymchuk (firstname.lastname@example.org).
Information contained in this overview is for general information purposes only, does not constitute legal or other professional advice, and should not be relied upon as a substitute for specific professional advice tailored to particular circumstances.