10 Novelties of Ukrainian IP draft

Ukrainian companies suffer a lot from gaps in national legislation on industrial designs. In new period the Ministry of Economic Development and Trade developed a new draft of Law of Ukraine “Concerning amendments in some judicial acts of Ukraine about the improvement of legal protection of Intellectual (industrial) Property” of 30.09.2015. Not every provision of the law is definitely positive, but his adoption was long expected. At first, many regulations on issues in the sphere of Intellectual Property were adopted in far 1993. Of course, after that, they were modified, but it is time to change them cardinally. Besides, some of changes we must implement because of the EU Association Treaty. So, lets clarify, what novelties concerning industrial designs protection are proposed by the Ministry. 1) Object of industrial design is not only the product appearance, but also the appearance of the product's part. Such amendments are called by necessity of legislation harmonization. At the first glance, such change can be considered as insignificant. But, actually, it largely extends a range of objects, which can be applied as industrial designs. Imagine that you have developed a new automobile bumper, which integrated into the body sill smoothly. It will be properly to apply not the whole body, but only its new part, as we do not know, how many doors will be in particular automobile model, or it will be hatchback or sedan, etc. But now you can apply only an automobile body, bumper, or body sill, and not a separate part. 2) Changes concern not only the subject of applications, but also their form. Thus, it is proposed to replace title 'industrial design patent' by 'industrial design certificate'. Such change is notable, but not of the first matter. Mostly it is dictated by the necessity of terms harmonization. 3) Authors of the governmental draft also propose to harmonize the duration period for property rights on industrial designs with EU legislation. Today in Ukraine it is 15 years from the date of application filing. In case of draft passing, the duration period for exclusive proper rights on an industrial design will lasts 5 years from the date of application filing. This period can be renewed for one or more 5-year periods. The total duration period for these rights cannot exceed 25 years. In this way, the total duration period for proper rights on industrial designs will be extended. 4) With the draft, new criteria – originality of industrial design will be taken into action, as also the opportunity of patent invalidation by board of Appeal. It should be noticed, that case proceedings in the board of Appeal take less time and go easier than in court. In addition, the qualification of judges on Intellectual Property issues usually is far more higher. 5) There is a proposition to start the practice of the protection of unregistered industrial designs. This item is very important, as it will help business in developing of the new products at minimal cost. Unregistered industrial design will receive the legal protection for 3 years from the date of disclosing it to the public on the territory of Ukraine. The industrial design proprietor will be able to prohibit its copying during this period. This is very important for business developing of many companies. Imagine that the furniture manufacturer created 25 new chair models. He does not know, what chairs will be in demand and sells them through commercial networks. He has to wait for a few months to understand, which of his new models found market. Protecting the appearances of all 25 new chair models has a little sense, but the risks of copying the most popular and successful models by competitors. From the moment of disclosing his works to the public, the models of creator receive protection as unregistered industrial designs, and the manufacturer has nothing to worry about. Besides, for some companies, especially those operating in fashion industry, this principle can be the only way of effective protection. 6) The application supposes to be related as to a single, and to a few industrial designs belonging to the same class of International Classification of industrial designs. Such multiple application should contain no more than 100 industrial designs. This initiative can be considered as the most controversial among other ones in the draft of the Ministry. From the one side, such opportunity is provided in many countries. But, in my opinion, Ukraine is not ready for this provision yet. Patent trolling is spread widely in our country, and the 'collective' procedure will make a process of protection obtaining (including unfair protection) cheaper and easier. 7) The law also offers a number of legal developments concerning the trademarks. Thus, it is suggested that applications and international trademark registrations will be published. After such publication, anyone will be able to file well-reasoned opposition against illegal application. De facto, data concerning national applications and international registrations from Ukraine are being published, but from now, it will be legislated. Current legislation also provides the opportunity of opposition filing against trademark registration, but, until recently (August 2015), data concerning filed applications was not opened, and companies very often did not know about filing of applications which infringe their rights. 8) The period, after which the early termination of trademark registration can be required, also will be harmonized. Today, according to the Law of Ukraine “Concerning the protection of trademark rights”, if the trademark has not being used in Ukraine fully or partially for 3 years, anyone can bring a court action concerning the early termination of registration, fully or partially. In case of draft adoption, 3-year period will be replaced by 5-year period. I think that the period of non-use for the early termination of registration should be affected by the market realities. As in EU, in most cases, the term of business establishment lasts longer than in Ukraine, non-use period of TM should be also longer. 9) Some provisions of the document are targeted on unfair distributors fighting. It is carried that if the agent of the foreign trademark proprietor registers the trademark in Ukraine without approving, the foreign proprietor can dispute illegal registration and transfer the rights to the authorized agent (distributor). Today in Ukraine it is a serious problem, as many distributors, even without exclusive rights, trying (and very often successfully), to register the trademarks of associated companies. It is must be admitted, that, in Ukraine, there is only practice of such trademarks invalidation, but there are no cases of rights transferring to the valid proprietor. To the point, the draft also assumes that, if the trademark certificate will be unvalidated, the proper trademark owner, to whom the damage was caused, can require a monetary penalty, as well as to receive it in case of illegal trademark use. 10) The statement that certificate on a trademark cannot be unvalidated on expiry of 5-year term, can cause the negative influence on protection of Intellectual Property in Ukraine, excepting the certificate granting as a result of filing the application with the infringement of rights of the third parties. Such provisions are in legislations of many countries, but it seems that Ukraine is not ready for them yet. Generally, the concerned document can fill many gaps in Ukrainian legislation on Intellectual Property protection. Now, he is brought up for public discussion. I hope that Ukrainian Ministry of Economy and Development will pay attention to the comments and will take them into account while further developing, as Ukraine is now ready for progressive changes implementation. Mariya Ortynska Attorney-at-Law, Patent Attorney of Ukraine The Director of IPStyle company